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 .
Bauman Type Non-Provisional Application
The instant application was identified, on filing, as a continuation of Application No. 18/390,283, which was an application for reissue of U.S. Patent No. 11,254,160. See Application Data Sheet (ADS), filed January 24, 2025, as part of the original filing of the instant application.
The mere fact that an application purports to be a continuation or divisional of a parent reissue application does not make it a reissue application itself because it is possible to file a 35 U.S.C. 111(a) continuing application of a reissue application. See In re Bauman, 683 F.2d 405, 409, 214 USPQ 585, 589 (CCPA 1982) (a patentee may file a regular continuation of a reissue application that obtains the benefit of the reissue application’s filing date).
As discussed in the prior Office action, the instant application was not identified, on filing, as both a continuation and a reissue application. Accordingly, the instant application was processed as a 35 U.S.C. 111(a) continuation of a reissue application (see Filing Receipt mailed February 19, 2025). On June 23, 2025, Applicant filed a petition to convert the Bauman-type application to a reissue application. In a Petition Decision mailed July 11, 2025, Applicant’s petition was dismissed. Accordingly, this application will continue to be examined as a Bauman type continuation application, i.e., a 35 U.S.C. 111(a) continuing application of a reissue application. See MPEP § 1451.
In a Bauman type continuing application, the patent sought to be reissued by the parent (or grandparent) reissue application is available as prior art under pre-AIA 35 U.S.C. 102(b) or AIA 35 U.S.C. 102(a)(1) with respect to a Bauman type continuing application if the parent (or grandparent) reissue application was filed more than one year after the grant date of the patent. In this case, U.S. Patent No. 11,254,160 (i.e., the patent sought to be reissued by the parent reissue application), which issued on February 22, 2022, qualifies as prior art under AIA 35 U.S.C. 102(a)(1) with respect to the instant Bauman type continuing application because the patent was published more than one year prior to the effective filing date of the instant application. Related U.S. Patent No. 11,453,236, which issued on September 27, 2022, and U.S. Patent No. 11,472,227, which issued on October 18, 2022, also qualify as prior art under AIA 35 U.S.C. 102(a)(1) with respect to the instant Bauman type continuing application because these patents were also published more than one year prior to the effective filing date of the instant application.
Option to Refile Proper Continuation/Divisional Reissue Application
If Applicant intended for this application to be a continuation/divisional reissue application, as opposed to a Bauman type continuing application, applicant may abandon this application and refile a proper continuation/divisional reissue application while parent reissue Application No. 18/390,283 is still pending. See MPEP § 1451 concerning the filing of a continuation/divisional reissue application. See also Reissue Application Filing Guide at www.uspto.gov/sites/default/files/forms/uspto_reissue_ads_guide_Sept2014.pdf. Applicant should ensure the continuation/divisional reissue application fulfills all the requirements for a reissue application. See 35 U.S.C. 251 and 37 CFR 1.172, 1.173 and 1.175. With respect to the required fees, see 37 CFR 1.16(e), (n), and (r).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by U.S. Patent No. 11,254,160 (hereinafter the ‘160 patent).
Regarding claim 1-8, the ‘160 patent discloses a tension rotation device assembly (Figs. 8A-10C) for a wheel cover overlay with extended surround (161, Figs. 12B-C) comprising: an emblem support device (177) having a plurality of tension tabs (166a), a tension rotation device (88a) having a tension rotation device prong (88b); and a tension rotation device fastener (88d, Fig. 8B); wherein the tension tabs (166a) are configured to connect with tension tab guide plate slits (166, Fig. 8A) within a tension tab guide plate (165) of a wheel cover overlay; wherein the tension tabs (166a) of the emblem support device (177) are configured to attach to a plurality of minor tension tabs (90a, Figs. 10A-C) of a wheel cover overlay tension tabs assembly (col. 16:50-58); wherein the tension rotation device prong (88b) is configured to penetrate a tension rotation device prong opening (88c) of the wheel cover overlay; and wherein the tension rotation device fastener (88d) is configured to secure the tension rotation device (88a) to the wheel cover overlay (col. 14:19-27, 15:1-22) (claim 1), wherein the emblem support device (177) is configured to insert into the tension tab guide plate slits (166) (claim 2); wherein the tension rotation device (88a) is configured to insert through a through hole (326, Fig. 8A) of a wheel of a vehicle (claims 3 and 5); and wherein the fastener (88d) is configured to tighten the tension rotation device (88a) within a cavity of the wheel cover overlay (see Fig. 9) (claims 4 and 6-8).
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by U.S. Patent No. 11,453,236 (hereinafter the ‘236 patent).
Regarding claim 1-8, the ‘236 patent discloses a tension rotation device assembly (Figs. 8A-10C) for a wheel cover overlay with extended surround (161, Figs. 12B-C) comprising: an emblem support device (177) having a plurality of tension tabs (166a), a tension rotation device (88a) having a tension rotation device prong (88b); and a tension rotation device fastener (88d, Fig. 8B); wherein the tension tabs (166a) are configured to connect with tension tab guide plate slits (166, Fig. 8A) within a tension tab guide plate (165) of a wheel cover overlay; wherein the tension tabs (166a) of the emblem support device (177) are configured to attach to a plurality of minor tension tabs (90a, Figs. 10A-C) of a wheel cover overlay tension tabs assembly (col. 16:50-58); wherein the tension rotation device prong (88b) is configured to penetrate a tension rotation device prong opening (88c) of the wheel cover overlay; and wherein the tension rotation device fastener (88d) is configured to secure the tension rotation device (88a) to the wheel cover overlay (col. 14:19-27, 15:1-22) (claim 1), wherein the emblem support device (177) is configured to insert into the tension tab guide plate slits (166) (claim 2); wherein the tension rotation device (88a) is configured to insert through a through hole (326, Fig. 8A) of a wheel of a vehicle (claims 3 and 5); and wherein the fastener (88d) is configured to tighten the tension rotation device (88a) within a cavity of the wheel cover overlay (see Fig. 9) (claims 4 and 6-8).
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by U.S. Patent No. 11,472,227 (hereinafter the ‘227 patent).
Regarding claim 1-8, the ‘227 patent discloses a tension rotation device assembly (Figs. 8A-10C) for a wheel cover overlay with extended surround (161, Figs. 12B-C) comprising: an emblem support device (177) having a plurality of tension tabs (166a), a tension rotation device (88a) having a tension rotation device prong (88b); and a tension rotation device fastener (88d, Fig. 8B); wherein the tension tabs (166a) are configured to connect with tension tab guide plate slits (166, Fig. 8A) within a tension tab guide plate (165) of a wheel cover overlay; wherein the tension tabs (166a) of the emblem support device (177) are configured to attach to a plurality of minor tension tabs (90a, Figs. 10A-C) of a wheel cover overlay tension tabs assembly (col. 16:47-55); wherein the tension rotation device prong (88b) is configured to penetrate a tension rotation device prong opening (88c) of the wheel cover overlay; and wherein the tension rotation device fastener (88d) is configured to secure the tension rotation device (88a) to the wheel cover overlay (col. 14:16-52) (claim 1), wherein the emblem support device (177) is configured to insert into the tension tab guide plate slits (166) (claim 2); wherein the tension rotation device (88a) is configured to insert through a through hole (326, Fig. 8A) of a wheel of a vehicle (claims 3 and 5); and wherein the fastener (88d) is configured to tighten the tension rotation device (88a) within a cavity of the wheel cover overlay (see Fig. 9) (claims 4 and 6-8).
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Wang (US Patent No. 10,046,597, hereinafter Wang).
Regarding claim 1, Wang discloses a tension rotation device assembly (Figs. 1-8) for a wheel cover overlay (wheel cover 1) with extended surround (e.g., peripheral border of cover 1, Fig. 1)1 comprising: an emblem support device (cover 5, Figs. 4 and 6, col. 4:38-41; “cover 5 printed with brand name or logo,” col. 5:4-5) having a plurality of tension tabs (engaging legs 51); a tension rotation device (adjusting block 2, col. 3:57-4:14; compare to Applicant’s tension rotation device 88a, Fig. 8A) having a tension rotation device prong (screw 25); and a tension rotation device fastener (nut 3); wherein the tension tabs (51) of the emblem support device (5) are configured to connect with a plurality of tension tab guide plate slits (separating holes 14, Fig. 2, and/or slots 151, Figs. 3 and 6, col. 3:44-46, 4:42-49) within a tension tab guide plate (bearing seat 13 with annular seat 15, col. 3:37-48) of a wheel cover overlay (1); wherein the tension rotation device prong (25) of the tension rotation device (2) is configured to penetrate through a tension rotation device prong opening (132, Fig. 8) of the wheel cover overlay (col. 4:52-54), and wherein the tension rotation device fastener (3) is configured to secure the tension rotation device (2) to the wheel cover overlay (col. 4:4-31).
The limitation “wherein the tension tabs of the emblem support device are configured to attach to a plurality of minor tension tabs of a wheel cover overlay tension tabs assembly” describes a functional limitation of the tension tabs. The claim does not positively recite a wheel cover overlay tension tabs assembly or a plurality of minor tension tabs as part of the claimed device. Regarding functional limitations, wherein the apparatus is described as "configured to” accomplish stated functions, the examiner notes that an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). In this case, Wang teaches every claimed structural component, as discussed above. Moreover, Wang teaches that the tension tabs (51) of the emblem support device (5) are configured to attach to at least one tab (protruded ring 12, Fig. 6) of a wheel cover overlay assembly (of wheel cover 1), such that Wang is understood to be capable of meeting the functional limitations. For these reasons, the functional limitations of the tension tabs with respect to additional unclaimed elements does not patentably distinguish the claimed invention from that of Wang.
Regarding claim 2, Wang further discloses the emblem support device (5) having the tension tabs (51) is configured to insert into the tension tab guide plate slits (14 and/or 151) within the tension tab guide plate (13, 15; col. 3:44-46, 4:42-49).
Regarding claims 3 and 5, Wang further discloses the tension rotation device (2) is configured to insert through a through hole (shaft hole 41, Figs. 4-6) of a wheel of a vehicle (col. 4:15-37).
Regarding claims 4 and 6-8, Wang further discloses the tension rotation device fastener (25) is configured to tighten the tension rotation device (2) within a cavity of the wheel cover overlay (i.e., within the cavity defined by the annular seat 15 of the wheel cover overlay 1, see Figs. 4-6; “Rotating the nut 3 in one direction can make the adjusting block 2 move toward the interior of the annular seat 15,” col. 4:7-8).
Terminal Disclaimer
The terminal disclaimers filed on June 23, 2025, disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patents No. 11,254,160 and 11,453,236 have been reviewed and is accepted. The terminal disclaimers have been recorded.
Response to Arguments
Applicant's arguments filed June 23, 2025, have been fully considered but they are not persuasive. In response to Applicant’s argument that Wang’s tension tabs are configured to engage a protruding tab (12 of Wang, Fig. 6) rather than minor tension tabs, the examiner notes that the minor tension tabs are not being claimed as part of the invention and thus do not patentably distinguish the claimed invention from that of Wang. The examiner notes that Wang’s tension tabs (51, Fig. 4) are structurally very similar to Applicant’s disclosed tension tabs (166a, Fig. 9). Applicant has not claimed any distinct structural features of the tension tabs of the emblem support device, nor has Applicant pointed out any structural features of Wang’s tension tabs that would prevent them from functioning as claimed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Laura L. Davison whose telephone number is (571)270-0189. The examiner can normally be reached Monday - Friday, 8:00 a.m. - 4:00 p.m. ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Patricia L. Engle can be reached at (571)272-6660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:
/JOSHUA KADING/Reexamination Specialist, Art Unit 3993
/Patricia L Engle/SPRS, Art Unit 3993
1 Features of the overlay recited in the preamble are interpreted to be a context of intended use of the claimed tension rotation device assembly rather than a claim limitation. See MPEP § 2111.02.