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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 17/963,685, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed application does not provide support or enablement for the limitation “wherein the cap snaps on to one of a vehicle wheel and an axle” from independent claims 1 and 12.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because of the following:
The “puck” is referred to by reference numbers “130” (para. 36, line 1), “120” (para. 36, line 6) and “140” (para. 37, line 1)
Reference number “120” has been used to refer to both the “cap” (para. 35, line 2) and the “central bearing sleeve” (para. 38)
Reference number “115” has been used to refer to both a “wheel” (para. 35, line 3) and what appears to be a hub cap or center cap (Fig. 12)
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 following must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
The feature that allows the “cap” to “snap on to one of a vehicle wheel and an axle” from claims 1 and 12. Fig. 12 merely shows the floating puck and cap sitting on a table, not attached to a wheel or an axle
An embodiment wherein “the counterweight is embedded in a land within the cap” from claim 11
An embodiment that has “the cap snap[s] on to one of a vehicle wheel and an axle” and also uses “a retainer clip affixing the cup to the vehicle wheel cover or axle” from claim 13
The “perimeter sidewall” from claim 2
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 the description for Fig. 12 states that it “shows a floating centercap assembly positioned on a wheel according to one embodiment” but Fig. 12 merely shows a floating puck on a center cap sitting on a table, not attached to a wheel.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 12 recite the limitation “wherein the cap snaps on to one of a vehicle wheel and an axle”. The specification and drawings do not adequately describe or show how the cap would “snap on to” either a vehicle wheel or an axle.
Claim 11 recites the limitation “the counterweight is embedded in a land within the cap”, however this would not make sense with the disclosure and would not provide the desired purpose of keeping the floating puck from spinning. As such, it is assumed to applicant intended the limitation to refer to the puck rather than the cap. It is noted that the applicant refers to the axially outer design holding element which does not rotate with the tire as a “cap” in the beginning of the specification (the portion associated with parent application 17/963,685) and as a “floating puck” in latter portion of the specification which is the portion that contains the embodiment from the claims which supposedly “snaps on” a wheel or axle. The term “cap” is used in the latter portion of the specification to refer to the element the rotating portion attaches to through the bearing(s) and is also attached to the wheel or axle. To avoid confusion, it is recommended to use the same term for similar parts throughout the disclosure.
Claim 13 recites the limitation “wherein the cap includes a retainer clip affixing the cup to the vehicle wheel cover or axle”. The specification and drawings do not describe or show an embodiment of a cap which “snaps on to one of a vehicle wheel and an axle” and also includes either a retainer clip or cup. As such, it is unclear how the retainer clip or the cup would be used or positioned in relation to the cap.
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 12 and 13 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 12 recites the limitation “the bearings” in line 4. There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitations "the cup" and “the vehicle wheel cover”. There is insufficient antecedent basis for these limitations in the claim.
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 1-5, 7-9, and 11-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by MARSCHOLLEK DE 102019202507 A1.
Regarding claim 1, Marschollek discloses a floating centercap assembly for a vehicle comprising: a cap 14; a central bearing 18 affixed to the cap 14; a floating puck 24 affixed to the central bearing 18, the central bearing 18 rotationally positioned with respect to the floating puck 24; and wherein the cap 14 snaps on to one of a vehicle wheel and an axle. (Fig. 1b and 2)
Regarding claim 2, Marschollek discloses the floating centercap assembly of Claim 1 wherein the cap 14 includes a central bearing sleeve 50 and a perimeter sidewall. (Fig. 1a and 1b)
Regarding claim 3, Marschollek discloses the floating centercap assembly of Claim 2 wherein the central bearing 18 is positioned within the central bearing sleeve 50. (Fig. 1a and 1b)
Regarding claim 4, Marschollek discloses the floating centercap assembly of Claim 3 further comprising a second central bearing (still referred to by reference number 18) positioned within the central bearing sleeve 50. (Fig. 1a and 1b)
Regarding claim 5, Marschollek discloses the floating centercap assembly of Claim 3 further comprising a bearing retainer (overhanging lip on the top of bearing sleeve which snaps over the bearing) positioned on the bearing sleeve 50 to retain the central bearing 18. (Fig. 1b)
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Regarding claim 7, Marschollek discloses the floating centercap assembly of Claim 1 comprising two central bearings 18, the two central bearings stacked on top of each other. (Fig. 1a and 1b)
Regarding claim 8, Marschollek discloses the floating centercap assembly of Claim 1 further comprising a counterweight 28 positioned on the floating puck 24. (Fig. 1a and 1b)
Regarding claim 9, Marschollek discloses the floating centercap assembly of Claim 8 wherein the counterweight 28 comprises an arcuate segment having an arc of less than 120 degrees. (Fig. 1a shows the counterweight to be approximately 120 degrees or less)
Regarding claim 11, Marschollek discloses the floating centercap assembly of Claim 8 wherein the counterweight 28 is embedded in a land within the puck 24. (The original claim says the “counterweight is embedded in a land within the cap”, however this would not make sense with the disclosure and would not provide the desired purpose of keeping the floating puck from spinning. As such, it is assumed to applicant intended the limitation to refer to the puck rather than the cap).
Regarding claim 12, Marschollek discloses a floating centercap assembly for a vehicle comprising: a cap 14 having a central bearing sleeve 50; a central bearing 18 positioned within the central bearing sleeve 50; a bearing retainer (see annotated Fig. 1b above) positioned on the bearing sleeve 50 to retain the bearings 18 within the bearing sleeve 50; a floating puck 24 affixed to the central bearing 18, the central bearing 18 rotationally positioned with respect to the floating puck 24; a counterweight 28 positioned on the floating puck 24; and wherein the cap 14 snaps on to one of a vehicle wheel and an axle. (Fig. 1a and 1b)
Regarding claim 13, Marschollek discloses the floating centercap of Claim 12 wherein the cap 14 includes a retainer clip (shown in annotated Fig. 1b below; the element shown allows the cap to clip or snap on to the wheel) affixing the cup to the vehicle wheel or axle.
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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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Marschollek DE 102019202507 A1 in view of Lee US 20230078032 A1.
Regarding claim 10 Marschollek teaches the floating centercap assembly of Claim 8 wherein the floating puck 24 includes a channel and the counterweight is positioned within the channel. Marschollek does not teach the channel including two or more posts which are engaged with the counterweight. Lee teaches two posts with screws to hold the counterweight (Fig. 2a and 2b). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to use posts and screws in addition to the channel to ensure the counterweight would not come off and cause damage to the wheel or other vehicles on the road with a reasonable expectation of success.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited prior art gives examples of floating center caps.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEX R PALMER whose telephone number is (703)756-1981. The examiner can normally be reached M-F 8:30 am - 5:00 pm MST.
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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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/AP/Examiner, Art Unit 3615
/S. Joseph Morano/Supervisory Patent Examiner, Art Unit 3615
