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 § 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.
Claims 9-11 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding claim 9, the limitation “the attachment system comprises a plurality of snap tabs, wherein the plurality of snap tabs comprises at least a first snap tab on a first major flange of the plurality of major flanges and a second snap tab on a second major flange of the plurality of major flanges” is unclear because it appears to be inconsistent with the specification. The specification explicitly states that “[t]he present invention has a unique geometric shape which differs from .. snap tabs” (¶ 7, emphasis added). Snap tabs are described only in the context of prior art wheel covers (see ¶¶ 5, 60 and Fig. 2). It is unclear what would fall within the scope of “snap tabs” since the specification explicitly states that the features of the present invention differ from snap tabs. Therefore, the claim is indefinite due to the lack of correspondence between the specification and claims. See MPEP § 2173.03. Claims 10-11 are rejected in view of their dependency from claim 9. For further discussion of this rejection, see Response to Arguments below.
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 and 12 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 and 12, the ‘160 patent discloses an improved wheel cover overlay assembly (Figs. 8C and 12A-B) comprising inboard and outboard surface areas, a peripheral boundary, a peripheral extended surround (161, Fig. 12B) having first and second portions in the configuration claimed (see Fig. 12B), and an attachment system (Fig. 8C) as recited in claim 1, lug nut towers (70e, Fig. 8C) as recited in claim 2, a plurality of major flanges (50, Fig. 8C) as recited in claim 3, a plurality of minor flanges (51) as recited in claim 4, and a tension tab guide plate (165, Figs. 8A-B) and associated features (see col. 14:19-15:22) recited in claim 5, and the attachment system comprising first and second hook-shaped members (600a-b, Fig. 8C) and their associated features (see col. 15:23-54) as recited in claims 6-8, wherein the wheel cover overlay assembly is fabricated of a polymer material (col. 3:18-24) as recited in claim 12.
Claims 1-8 and 12 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 and 12, the ‘236 patent discloses an improved wheel cover overlay assembly (Figs. 8C and 12A-B) comprising inboard and outboard surface areas, a peripheral boundary, a peripheral extended surround (161, Fig. 12B) having first and second portions in the configuration claimed (see Fig. 12B), and an attachment system (Fig. 8C) as recited in claim 1, lug nut towers (70e, Fig. 8C) as recited in claim 2, a plurality of major flanges (50, Fig. 8C) as recited in claim 3, a plurality of minor flanges (51) as recited in claim 4, and a tension tab guide plate (165, Figs. 8A-B) and associated features (see col. 14:19-15:22) recited in claim 5, and the attachment system comprising first and second hook-shaped members (600a-b, Fig. 8C) and their associated features (see col. 15:23-54) as recited in claims 6-8, wherein the wheel cover overlay assembly is fabricated of a polymer material (col. 3:18-24) as recited in claim 12.
Claims 1-8 and 12 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 and 12, the ‘227 patent discloses an improved wheel cover overlay assembly (Figs. 8C and 12A-B) comprising inboard and outboard surface areas, a peripheral boundary, a peripheral extended surround (161, Fig. 12B) having first and second portions in the configuration claimed (see Fig. 12B), and an attachment system (Fig. 8C) as recited in claim 1, lug nut towers (70e, Fig. 8C) as recited in claim 2, a plurality of major flanges (50, Fig. 8C) as recited in claim 3, a plurality of minor flanges (51) as recited in claim 4, and a tension tab guide plate (165, Figs. 8A-B) and associated features (see col. 14:16-15:19) recited in claim 5, the attachment system comprising first and second hook-shaped members (600a-b, Fig. 8C) and their associated features (see col. 15:19-51) as recited in claims 6-8, wherein the wheel cover overlay assembly is fabricated of a polymer material (col. 3:17-23) as recited in claim 12.
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.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over the ‘160 patent, the ‘236 patent, or the ‘227 patent.
Regarding claims 9-10, the ‘160 patent, the ‘236 patent, and the ‘227 patent each disclose the claimed invention substantially as claimed, as set forth above for claim 3. The ‘160 patent, the ‘236 patent, and the ‘227 patent each disclose that snap tabs were known prior to the invention. See Fig. 2 designated as “Prior Art,” showing a plurality of snap tabs (60) including at least a first snap tab (60) on a first major flange (50) and a second snap tab (60) on a second major flange (50) (claim 9), and the first snap tab (60) protruding from a wall of the first major flange (50), the second snap tab protruding from a wall of the second major flange (50) (claim 10). Although the ‘160 patent, the ‘236 patent, and the ‘227 patent describe prior art snap tabs as a less desirable alternative to the attachment system that is described as the invention, it is evident from the patent disclosures that the prior art snap tabs are at least adequate for the purpose of attaching a wheel cover overlay assembly to an underlying wheel cover. See col. 8:21-32. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of the ‘160 patent, the ‘236 patent, or the ‘227 patent by replacing the attachment system with prior art snap tabs protruding from the walls of the first and second major flanges, for example, for the purpose of reducing manufacturing costs, since this involves only the simple substitution of one known attachment system for attaching a wheel cover overlay to an underlying wheel cover for another known attachment system for attaching a wheel cover overlay to an underlying wheel cover, to yield predictable results.
Regarding claim 11, the ‘160 patent, the ‘236 patent, and the ‘227 patent further disclose that the first and second snap tabs (60, Fig. 2) each comprise a snap tab edge (as illustrated in Fig. 2). While the ‘160 patent, the ‘236 patent, and the ‘227 patent are silent with respect to the material of the prior art snap tab and snap tab edge, the ‘160 patent, the ‘236 patent, and the ‘227 patent each further disclose that rigid polymer is a suitable material for the attachment system. See col. 3:56-58. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to further modify the invention of the ‘160 patent, the ‘236 patent, or the ‘227 patent by selecting a rigid polymer material for the snap tabs (including for their respective edges), since the court has found that the mere selection of a known material on the basis of suitability for the intended use would be entirely obvious. See In re Leshin, 277 F.2d 197, 125 USPQ 416 (CCPA 1960).
Claims 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Tataru (US Patent Pub. 2022/0203760, hereinafter Tataru) in view of Bruce (US Patent No. 7,300,116, hereinafter Bruce).
Regarding claim 1, Tataru discloses an improved wheel cover overlay assembly (wheel cover 35, Figs. 1-2) comprising: an inboard surface area (“inner surface,” ¶ 29), an outboard surface area (outer surface 37, Fig. 2; ¶ 27); a peripheral boundary (outer peripheral edge, see Fig. 1); a peripheral extended surround (outer peripheral portion 20) having a first portion extending upwardly and inwardly from the peripheral boundary (see Fig. 2); and an attachment system (center cap 36, Fig. 2, ¶ 45; and/or clamps 104, Fig. 6, ¶ 42).
Tataru does not explicitly disclose a second portion of the peripheral extended surround curving downwardly from the first portion towards a wheel cover overlay central axis. However, in the art of wheel covers, Bruce teaches a similar wheel cover overlay assembly (wheel cover 22, Figs. 3-4 or 5) comprising a peripheral extended surround (outer periphery 37, Figs. 3-4; or peripheral lip 45, Fig. 5) having a second portion curving downwardly from a first portion and towards a wheel cover overlay central axis (see Fig. 4) to provide a decorative finish to the wheel cover. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the peripheral surround of Tataru to include a second portion curving downwardly from the first portion and toward the wheel cover overlay central axis, as taught by Bruce, in order to enhance the decorative appearance at the outer periphery.
Regarding claim 2, the modified Tataru teaches the claimed invention substantially as claimed, as set forth above for claim 1. Tataru further teaches a plurality of lug nut towers (clearly shown in Figs. 5-6) comprising through holes (“a plurality of holes that correspond to the plurality of lug bolt holes 27 of the wheel 19,” ¶ 30).
Regarding claim 3, the modified Tataru teaches the claimed invention substantially as claimed, as set forth above for claim 2. Tataru further teaches a plurality of major flanges (at vent openings 38, Figs. 1-2 and 6; ¶ 28) with walls protruding from the inboard surface area (most clearly shown in Figs. 2 and 6), wherein the plurality of major flanges comprise a plurality of through holes (¶ 28, “vent openings”) directly formed1 into the surface of the inboard surface area (see Figs. 2 and 6; compare Applicant’s through holes 66a, Fig. 8C). The examiner notes that the term “major flanges” can be interpreted in the context of claim 3 as referring to all of the vent openings (38) or to the subset of larger vent openings (38, Figs. 1 and 6).
Regarding claim 4, the modified Tataru teaches the claimed invention substantially as claimed, as set forth above for claim 3. Considering the term “major flanges” as referring to the subset of larger vent openings, Tataru further teaches a plurality of minor flanges (at smaller vent openings 38, Figs. 1-2 and 6; ¶ 28) with walls protruding from the inboard surface area (most clearly shown in Figs. 2 and 6), wherein the plurality of minor flanges comprise a plurality of through holes (¶ 28, “vent openings”) directly formed2 into the surface of the inboard surface area (see Figs. 2 and 6; compare Applicant’s through holes 66b, Fig. 8C).
Regarding claim 5, the modified Tataru teaches the claimed invention substantially as claimed, as set forth above for claim 4. Tataru further teaches a tension tab guide plate (i.e., the annular plate surrounding hub hole 42 as shown in Fig. 1, which includes the through-pockets 98 illustrated without labeling in Fig. 1 and labeled in Fig. 5, for guiding the tabs 95 of center cap 36, Fig. 6; ¶ 39); a tension tab guide plate slit (through-pocket 98, Figs. 1 and 5; ¶ 39); a vehicle emblem support device (front portion 90 of center cap 36, Fig. 4, ¶ 39; see emblem in Fig. 8); at least one tension tab (any one of tabs 95, Fig. 6; ¶ 39) of the vehicle emblem support device; a tension rotation device prong (outer shoulder 97 or 99 of any one of tabs 95 of center cap 36, Fig. 10, ¶ 39; the cap 36 being rotated as described at ¶ 45); a tension rotation device opening (cutout portion 102, Fig. 10; ¶ 39); a tension device fastener (any other one of tabs 95, Fig. 6; ¶ 39); and a tension tabs assembly (central projection with first tabs 72 and second tabs 70, Fig. 5; ¶ 32) comprising at least one minor tension tab (70) and at least one major tension tab (72), the major tension tab (72) comprising a rigid curved polymer lip (chamfered outer surface 72C, which is part of the “one-piece wheel cover formed from plastic,” ¶ 27, and thus understood to be rigid polymer) protruding continuously along all of a rigid polymer longitudinal edge (i.e., along length of upper edge of tab 72, Fig. 5) which is continuously connected to a rigid polymer curved arm edge at each opposing end (i.e., the curved edge at each end of the chamfered surface 72C, Fig. 5).
Regarding claims 6-8, the modified Tataru teaches the claimed invention substantially as claimed, as set forth above for claim 3. Considering the term “major flanges” in claim 3 as referring to all of the vent openings (38) of Tataru, Tataru further teaches the attachment system comprises a plurality of hook-shaped members (clamps 104, Fig. 6; ¶ 42) comprising a first hook-shaped member (one side of clamp 104) on a first major flange (38) of the plurality of major flanges and a second hook-shaped member (opposite side of clamp 104) on a second major flange (38) of the plurality of flanges, the second major flange opposing the first major flange (see Fig. 6) (claim 6), wherein the first hook-shaped member comprises a first rigid polymer longitudinal edge (see interior longitudinal edge of clamp 104 in annotated Fig. 6 below; the edge being part of the “one-piece cover formed from plastic,” ¶ 27, and thus understood to be rigid polymer), a first rigid polymer lip protruding from the first longitudinal edge (see raised lip of clamp 104 in annotated Fig. 6 below), a first rigid polymer curved arm edge (see outer edge of chamfered portion 105A) extending from a first end of the first longitudinal edge, and a second rigid polymer curved arm edge (see annotated Fig. 6 below) extending from a second end of the first longitudinal edge (claim 7); wherein the second hook-shaped member (being a mirror-image of the first hook-shaped member) similarly comprises a second rigid polymer longitudinal edge, a second rigid polymer lip protruding from the second longitudinal edge, a third rigid polymer curved arm edge extending from a first end of the second longitudinal edge, and a fourth rigid polymer curved arm edge extending from a second end of the second longitudinal edge (claim 8).
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Regarding claims 9-11, the modified Tataru teaches the claimed invention substantially as claimed, as set forth above for claim 3. The arms of clamps (104, Fig. 6) of Tataru’s attachment system are also reasonably considered to read on snap tabs because they are projections (i.e., tabs) that snap the wheel cover overlay assembly on to the underlying wheel (19; see ¶ 44). Considered in this light, Tataru teaches the attachment system comprising a plurality of snap tabs (clamps 104, Fig. 6) including at least a first snap tab (one side of clamp 104) on a first major flange (38) of the plurality of flanges and a second snap tab (the other side of clamp 104) on a second major flange (38) of the plurality of major flanges (see Fig. 6) (claim 9), wherein the first snap tab (104) protrudes from a wall of the first major flange (38) and the second snap tab (104) protrudes from a wall of the second major flange (38, Fig. 6) (claim 10), and wherein the first snap tab comprises a first snap tab rigid polymer edge (any edge of the first part of clamp 104) and the second snap tab comprises a second snap tab rigid polymer edge (any edge of the second part of clamp 104), the clamps being part of the “one-piece cover formed from plastic” (¶ 27) such that the edges are all understood to be rigid polymer as claimed (claim 11).
Regarding claim 12, the modified Tataru teaches the claimed invention substantially as claimed, as set forth above for claim 1. Tataru further teaches the wheel cover overlay assembly is fabricated of a polymer material (“plastic,” ¶ 27).
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. 11,453,236 and 11,472,227 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 claim 9 must be definite because independent claim 1 is definite, the examiner finds no legal basis for this position. The fact that claim 1 is not indefinite has no bearing on whether the added limitations of claim 9 clearly define the scope of the invention.
To elaborate on (and hopefully clarify) the problem with claim 9, MPEP § 2173.03 states, in pertinent part, with emphasis added:
The specification should ideally serve as a glossary to the claim terms so that the examiner and the public can clearly ascertain the meaning of the claim terms. Correspondence between the specification and claims is required by 37 CFR 1.75(d)(1), which provides that claim terms must find clear support or antecedent basis in the specification so that the meaning of the terms may be ascertainable by reference to the specification. …
A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970). For example, a claim with a limitation of "the clamp means including a clamp body and first and second clamping members, the clamping members being supported by the clamp body" was determined to be indefinite because the terms "first and second clamping members" and "clamp body" were found to be vague in light of the specification which showed no "clamp member" structure being "supported by the clamp body." In re Anderson, 1997 U.S. App. Lexis 167 (Fed. Cir. January 6, 1997) (unpublished).
In this case, claim 9 is indefinite because the description of the snap tabs and their location with respect to the major flanges is inconsistent with Applicant’s disclosure, which does not describe “snap tabs” in combination with the “attachment system” of Applicant’s invention. Rather, the specification states that Applicant’s attachment system “differs from … snap tabs” (¶ 7). Because the inventive attachment system has been disclosed as including attachment features that are different from prior art snap tabs, it is unclear what would be encompassed by claim 9 which recites the attachment system in combination with prior art snap tabs which Applicant’s specification says are different from the inventive attachment features.
Applicant’s arguments with respect to Heck have been considered but are moot because the new ground of rejection, set forth above in response to Applicant’s amendment, does not rely on Heck.
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 The phrase “directly carved” is interpreted as a product-by-process limitation that does not further limit the structure of the claimed wheel cover overlay. See MPEP § 2113.
2 See fn. 1 above.