Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
The drawings were received on 13 August 2026. These drawings are approved.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the center rotation device having “a plurality of tension tabs which expand outwardly when the center rotation device is turned in a clockwise direction within the hole passing through the central vertical axis” as set forth in claims 5, 9, 12, and 14; must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities: Paragraphs [0034-0086] should be renumbered as - -[0033-0085]- - to preserve numerical continuity.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 is indefinite due to the fact that it is unclear what is actually being claimed by the phrase “applied to at least a portion of the inner surface to a portion of the wheel”. This phrase is grammatically incorrect and thus appears to be incomplete.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3, 6-7, 13, and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miller (2020/0101789).
Per claim 1, Miller shows a wheel cover overlay 100 including a peripheral boundary (i.e. the radially outermost surface of the vent openings) defining inner and outer surfaces, and a surround extending from the peripheral boundary. A plurality of spokes and a plurality of openings are formed in the overlay 100. The openings extend from the outer surface through the inner surface and are located between successive spokes. A cladding material 228 connects at least a portion of the inner surface to a portion of a wheel 200.
Per claims 3 and 7, the overlay 100 includes a plurality of secondary spoke pairs and secondary openings, with each secondary spoke extending between a spoke terminal end and the peripheral boundary, and each secondary opening passing from the outer surface through the inner surface and located between two opposing secondary spokes.
Per claim 6, 13, and 17, the cladding material 228 is a foam adhesive (see paragraph [0067]).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 2, 4-5, 8-12, 14-16, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Miller as applied to claims 1, 3, 6-7, 13, and 17 above, and further in view of Hsieh (2018/0072094).
Regarding claim 2, Miller does not show the peripheral boundary extending past the circumferential edge of the wheel. Hsieh teaches the use of a wheel cover overlay 1 having a peripheral boundary extending past a circumferential edge of a wheel 2. Therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to extend the peripheral boundary of the cover overlay of Miller beyond the wheel, for the purpose of preventing damage to the wheel.
Regarding claims 4, 8, and 11, Miller shows the overlay including a plurality of lug nut through holes, but does not show a plurality of lug nut towers formed therearound. Hsieh teaches the use of a cover overlay 1 including a plurality of lug nut through holes 12 with lug nut towers 121 formed therearound. Therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to provide each lug nut through hole of Miller with a lug nut tower disposed therearound, for the purpose of centering the overlay during installation on the wheel, and to reinforce the lug nut mounting area.
Regarding claims 5, 9, 12, and 14, Miller does not show the cover overlay including a center “rotation” device inserted into a central hole therein with a plurality of tension tabs. It should be noted that the limitation that the limitation that the tabs expand outwardly “when the center rotation device is turned in a clockwise direction within the hole” is a method of installation step, which receives no patentable weight (see MPEP 2113). Hsieh teaches the use of a cover overlay 1 including a central hole 11 into which a center “rotation” device 14, which includes a plurality of tension tabs 141 that expand outwardly during installation. Furthermore, the center device 14 is capable of being rotated clockwise to align the tabs 141 with corresponding slots 114 into which the tabs 141 engage. Therefore, from this teaching, it would have been obvious to one of ordinary skill in the art, prior to the effective filing date of the claimed invention, and with a reasonable expectation of success, to provide the cover overlay of Miller with a center device for covering a central opening in the overlay to prevent debris from entering the central opening in the overlay and/or wheel 200.
Per claims 10, 15-16, and 18-20, Miller discloses and shows the cover overlay 100 including a cladding material 228 that is a foam adhesive (see paragraph [0067]).
Response to Arguments
Applicant's arguments filed 13 August 2026 have been fully considered but they are not persuasive. The Applicant argues that Miller fails to show a wheel cover including a “surround extending from the peripheral boundary”. However, this is not the case, as set forth in the expanded rejection above. Namely, the radially outmost surface of the vent openings define the “peripheral boundary”, and the remainder of the cover extending radially outwardly thereof constitutes the “surround”. Furthermore, it should be noted that claim 1 fails to set forth any actual physical structure that defines the “peripheral boundary”.
The Applicant argues that Miller “cannot be modified by” Hsieh because the combination would “destroy Miller’s principle of operation”. The Applicant argues that Miller shows a wheel cover that uses an adhesive along with “unique supports (212) which extend from the wheel and interact with recesses in the peripheral boundary of the wheel cover to assist in aligning and adhering the wheel cover overlay to the wheel”. The Applicant further argues that the wheel cover of Hsieh has a shape similar to the wheel, and that “to modify Miller to include any peripheral features of Hsieh or other prior art references, one would risk having to remove or destroy the relief (106) portion” of the cover of Miller. However, the Applicant is arguing a literal combination of the references, which is not the case (see section 12 below).
In response to applicant's argument that the Miller “cannot be modified by” Hsieh (see the second paragraph of section 11 above), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
In this case, Hsieh was only used to teach the use of a wheel cover having a surround portion that extends past the outer periphery of a wheel flange. One of ordinary skill in the art would find it obvious that the surround portion of the cover of Miller could be extended to end past the outer periphery of a wheel flange without changing any other features of the cover.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON R BELLINGER whose telephone number is (571)272-6680. The examiner can normally be reached M-F 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joe) Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON R BELLINGER/ Primary Examiner, Art Unit 3615
