DETAILED ACTION
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 .
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-4 and 14-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP H09156541 A)(Tanaka ‘541) in view of Unger et al. (US 2020/0298917 A1).
Regarding claim 1-3, Tanaka discloses a spare wheel carrier for a vehicle (Fig. 4), the spare wheel carrier comprising, hinges (12) configured to be rigidly coupled to a first rear pillar of the vehicle and including, a first hinge defining a hinge axis, and a second hinge positioned on the hinge axis (noting instances of 13), a carrier beam (14) rotatably coupled to the first hinge and the second hinge, the carrier beam configured to support a spare wheel (17), the first hinge defines a first hinge interface plane, wherein the second hinge defines a second hinge interface plane.
Tanaka does not specifically disclose a single hinge bracket, or a strut coupled between the hinge bracket and the carrier beam and positioned between the first hinge and the second hinge.
Unger teaches a similar swinging wheel carrier including a hinge bracket including an upper and lower hinges (170/174) each defining an interface plate, each having a hinge stud (210) and including a strut (404) extending between the hinge bracket and the carrier beam between the first hinge interface plane and the second hinge interface plate.
It would have been obvious to one having ordinary skill in the art before the effective filing date to take the device of Tanaka and use the teaching of Unger and include a bracket having a pair of hinge and include a strut to help control the opening and closing and/or rotation of the arm because such a change would require a mere choice of one known hinge structure over another and would have yielded predictable results. Alternatively, including a connecting portion between hinge portions similar to 178 of Unger would help to couple the hinges thereby maintaining a desired position and alignment relative to one another.
Modified Tanaka and specifically Unger demonstrates the first and second hinge separated by some distance, but does not specifically disclose the second hinge spaced from the first hinge by less than 300 mm, or the first hinge interface plane is spaced from the second hinge interface plane by 150 mm to 225 mm, or the carrier beam defines a height between an upper extremity and a lower extremity of 250 mm to 350 mm. It would have been obvious to one having ordinary skill in the art before the effective filing date to space the hinges less than 300mm, or the first hinge interface plane is spaced from the second hinge interface plane by 150 mm to 225 mm, or the carrier beam defines a height between an upper extremity and a lower extremity of 250 mm to 350 mm because such a change would have required a mere change in size of a component or a mere finding of an optimal range. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 4, modified Tanaka discloses a wheel projection (18) extending from the carrier beam and sized to receive the spare wheel.
Regarding claim 14, modified Tanaka demonstrates a carrier bar that is sized and shaped such as it is capable of being received between rear lights of a properly sized and configured vehicle.
Regarding claim 15, modified Tanaka and specifically Unger discloses the hinge bracket includes an upper bracket pad (124) and a lower bracket pad (128) configured to engage the first rear pillar, and wherein the first hinge and the second hinge are positioned between the upper bracket pad and the lower bracket pad (Fig. 5).
Regarding claim 16, Tanaka discloses a spare wheel carrier for a vehicle (Fig. 4), the spare wheel carrier comprising. hinge set configured to be rigidly coupled to a first rear pillar of the vehicle (Fig. 4) and including, a first hinge defining a first hinge interface plane, and a second hinge defining a second hinge interface plane (12, Fig. 4), a carrier beam (14) rotatably coupled to the first hinge and the second hinge, the carrier beam configured to support a spare wheel (17).
Unger teaches a similar swinging wheel carrier including a hinge bracket including an upper and lower hinges (170/174) each defining an interface plate, each having a hinge stud (210) and including a strut (404) extending between the hinge bracket and the carrier beam between the first hinge interface plane and the second hinge interface plate.
It would have been obvious to one having ordinary skill in the art before the effective filing date to take the device of Tanaka ‘822 and use the teaching of Unger and include a bracket having a pair of hinge and include a strut to help control the opening and closing and/or rotation of the arm because such a change would require a mere choice of one known hinge structure over another and would have yielded predictable results. Alternatively, including a connecting portion between hinge portions similar to 178 of Unger would help to couple the hinges thereby maintaining a desired position and alignment relative to one another.
Modified Tanaka and specifically Unger demonstrates the first and second hinge separated by some distance, but does not specifically disclose the first hinge interface plane is spaced from the second hinge interface plane by 150 mm to 225 mm. It would have been obvious to one having ordinary skill in the art before the effective filing date to space the first hinge interface plane is spaced from the second hinge interface plane by 150 mm to 225 mm because such a change would have required a mere change in size of a component or a mere finding of an optimal range. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 17, modified Tanaka and specifically Unger discloses the hinge bracket further includes a bracket strut mount (414) engaged with the strut (404), and wherein the strut extends substantially parallel to a ground plane.
Claim(s) 5-11 and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP H09156541 A)(Tanaka ‘541) in view of Unger et al. (US 2020/0298917 A1) as applied to claim 1 above, and further in view of Burger et al. (US 5,538,168 A)(Burger).
Regarding claims 5-6, modified Tanaka does not specifically disclose a lower support pin; and a lower support receiver coupled to the carrier beam and sized to receive the lower support pin, or a lower support extending downward from the carrier beam and supporting the lower support receiver.
Burger disclose a frame lower support (34) configured to rigidly couple to a lower frame member (42) arranged between the first rear pillar and the second rear pillar (Figs. 1, 2 and 4) and a gate lower support (55/57) positioned to selectively engage the frame lower support.
It would have been obvious to one having ordinary skill in the art before the effective filing date to take the modified device of Tanaka and further include a frame lower support and a gate lower support in order to further support the tire carrier when it is in a closed position as demonstrated by Burger.
Modified Tanaka and specifically Burger discloses the frame lower support includes a lower receiver (34), and wherein the gate lower support includes a lower support pin (57) sized to receive the lower support pin. It would have been obvious to one having ordinary skill in the art before the effective filing date to take the place the support pin on the lower frame support and the receiver on the gate lower support because such a change would have required a mere reversal of parts. It has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Regarding claims 7-8, modified Tanaka and specifically Burger discloses the pin engaging the support receiver and specifically the rubber stop such that the pin is biased by the rubber stop to stabilize the spare tire assembly (Col. 4; Ll. 17-24), but does not specifically disclose the biasing (preload) provided is less than 100 N, or a preload length of 2 mm to 6 mm. Such a change would have required a mere finding of an optimal range. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 9, modified Tanaka discloses a latch (Fig. 5) coupled to the carrier beam, a latch pin (9e) coupled to the carrier beam, a strike plate (9f) positioned to engage the latch; and a strike plate receiver (9g) sized to receive the latch pin.
Regarding claim 10, modified Tanaka demonstrates a latch pin and a lower support pin separated by a vertical distance, but does not specifically disclose a vertical distance of 250 mm to 350 mm. It would have been obvious to size the device such that the vertical distance is between 250 mm and 350 mm because such a change would have required a mere change in size of a component or a mere finding of an optimal range. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 11, modified Tanaka discloses a handle (37) coupled to the carrier beam and configured to control operation of the latch.
Regarding claim 18, modified Tanaka discloses a latch (Fig. 5) coupled to the carrier beam; a latch pin (9e) coupled to the carrier beam, a strike plate (9f) positioned to engage the latch, a strike plate receiver (9g) sized to receive the latch pin.
Modified Tanaka does not specifically disclose a lower support receiver coupled to the carrier beam; and a lower support pin sized to be received by the lower support receiver, wherein the lower support pin is separated from the latch pin by a vertical distance of 250 mm to 350 mm.
Burger disclose a frame lower support (34) configured to rigidly couple to a lower frame member (42) arranged between the first rear pillar and the second rear pillar (Figs. 1, 2 and 4) and a gate lower support (55/57) positioned to selectively engage the frame lower support.
It would have been obvious to one having ordinary skill in the art before the effective filing date to take the modified device of Tanaka and further include a frame lower support and a gate lower support in order to further support the tire carrier when it is in a closed position as demonstrated by Burger.
Modified Tanaka and specifically Burger discloses the frame lower support includes a lower receiver (34), and wherein the gate lower support includes a lower support pin (57) sized to receive the lower support pin. It would have been obvious to one having ordinary skill in the art before the effective filing date to take the place the support pin on the lower frame support and the receiver on the gate lower support because such a change would have required a mere reversal of parts. It has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Modified Tanaka demonstrates a latch pin and a lower support pin separated by a vertical distance, but does not specifically disclose a vertical distance of 250 mm to 350 mm. It would have been obvious to size the device such that the vertical distance is between 250 mm and 350 mm because such a change would have required a mere change in size of a component or a mere finding of an optimal range. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claims 19-20, Tanaka discloses a spare wheel carrier for a vehicle (Fig. 4), the spare wheel carrier comprising, a hinge set defining a first hinge interface plane and a second hinge stud (13) defining a second hinge interface plane, a carrier beam (14) rotationally coupled to the hinges and defining a height (Fig. 4), a latch pin (9e) coupled to the carrier beam opposite the hinge set.
Tanaka does not specifically disclose a single hinge bracket, or a strut coupled between the hinge bracket and the carrier beam and positioned between the first hinge and the second hinge interface planes.
Unger teaches a similar swinging wheel carrier including a hinge bracket including an upper and lower hinges (170/174) each defining an interface plate, each having a hinge stud (210) and including a strut (404) extending between the hinge bracket and the carrier beam between the first hinge interface plane and the second hinge interface plate.
It would have been obvious to one having ordinary skill in the art before the effective filing date to take the device of Tanaka and use the teaching of Unger and include a bracket having a pair of hinge and include a strut to help control the opening and closing and/or rotation of the arm because such a change would require a mere choice of one known hinge structure over another and would have yielded predictable results. Alternatively, including a connecting portion between hinge portions similar to 178 of Unger would help to couple the hinges thereby maintaining a desired position and alignment relative to one another.
Modified Tanaka and specifically Unger demonstrates the first and second hinge separated by some distance, but does not specifically disclose the first hinge interface plane is spaced from the second hinge interface plane by 150 mm to 225 mm, or the carrier beam defines a height between an upper extremity and a lower extremity of 250 mm to 350 mm. It would have been obvious to one having ordinary skill in the art before the effective filing date to space the first hinge interface plane is spaced from the second hinge interface plane by 150 mm to 225 mm, or the carrier beam defines a height between an upper extremity and a lower extremity of 250 mm to 350 mm because such a change would have required a mere change in size of a component or a mere finding of an optimal range. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Further, in Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Modified Tanaka does not specifically disclose a lower support pin coupled to the carrier beam via a lower support.
Burger disclose a frame lower support (34) configured to rigidly couple to a lower frame member (42) arranged between the first rear pillar and the second rear pillar (Figs. 1, 2 and 4) and a gate lower support (55/57) positioned to selectively engage the frame lower support.
It would have been obvious to one having ordinary skill in the art before the effective filing date to take the modified device of Tanaka and further include a frame lower support and a gate lower support in order to further support the tire carrier when it is in a closed position as demonstrated by Burger.
Modified Tanaka and specifically Burger discloses the frame lower support includes a lower receiver (34), and wherein the gate lower support includes a lower support pin (57) sized to receive the lower support pin. It would have been obvious to one having ordinary skill in the art before the effective filing date to take the place the support pin on the lower frame support and the receiver on the gate lower support because such a change would have required a mere reversal of parts. It has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tanaka (JP H09156541 A)(Tanaka ‘541) in view of Unger et al. (US 2020/0298917 A1) as applied to claim 1 above, and further in view of Newbill (US 2008/0047985 A1).
Regarding claims 12-13, modified Tanaka does not specifically disclose a wheel cover coupled to the carrier beam by a cover hinge and a removable fastener, the wheel cover includes a license plate mount, license plate lights, and a reverse camera.
Newbill discloses a pivotable spare wheel holder including a wheel cover (170) coupled to the carrier beam, the wheel cover is rotationally coupled to the carrier beam by a cover hinge (163/173), the wheel cover includes a license plate mount (149), license plate lights (202), and a reverse camera (Paragraph 0075).
It would have been obvious to one having ordinary skill in the art before the effective filing date to take the modified device of Tanaka ‘822 and include a pivoting wheel cover similar to that of Newbill in order to protect the spare wheel and/or improve the aesthetics of the device, or to provide a convenient place to mount a license plate as demonstrated by Newbill.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-4 and 16 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 13 and 15 of copending Application No. 18/923,499 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3-4, 13 and 15 of copending Application No. 18/923,499 teach all of the limitations of claims 1-4 and 16.
Claims 5-10 and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 13 and 7-11 of copending Application No. 18/923,499 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 3-4, 13 and 7-11 of copending Application No. 18/923,499 teach all of the limitations of claims 5-10 and 18-20.
Claims 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 13 and 14 of copending Application No. 18/923,499 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4, 13 and 14 of copending Application No. 18/923,499 teach all of the limitations of claims 12.
Claims 14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 13 and 2 of copending Application No. 18/923,499 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4, 13 and 2 of copending Application No. 18/923,499 teach all of the limitations of claims 14.
Claims 17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 13 and 5 of copending Application No. 18/923,499 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 4, 13 and 5 of copending Application No. 18/923,499 teach all of the limitations of claims 17.
Claims 1-3, 16 and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 of copending Application No. 18/923,413 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 7-9 of copending Application No. 18/923,413 teach all of the limitations of claims 1-3, 16 and 18-20.
Claims 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 and 15 of copending Application No. 18/923,413 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 7-9 and 15 of copending Application No. 18/923,413 teach all of the limitations of claims 4.
Claims 5-8 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 and 3 and 5-6 of copending Application No. 18/923,413 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 7-9 and 3 and 5-6 of copending Application No. 18/923,413 teach all of the limitations of claims 5-8.
Claims 9-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 and 2 of copending Application No. 18/923,413 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 7-9 and 2 of copending Application No. 18/923,413 teach all of the limitations of claims 9-10.
Claims 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 and 12 of copending Application No. 18/923,413 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 7-9 and 12 of copending Application No. 18/923,413 teach all of the limitations of claims 11.
Claims 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7-9 and 13 of copending Application No. 18/923,413 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1 and 7-9 and 13 of copending Application No. 18/923,413 teach all of the limitations of claims 12.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/M.T.T./ Examiner, Art Unit 3734
/NATHAN J NEWHOUSE/ Supervisory Patent Examiner, Art Unit 3734
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