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 .
Reissue Applications
For reissue applications filed on or after September 16, 2012, all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions.
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. 11,254,160 (hereinafter the ‘160 patent) is or was involved. These proceedings would include any trial before the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Objections to the Amendments - Formalities
The specification amendments filed October 31, 2025, are objected to as failing to comply with 37 CFR 1.173(d), which requires that text that is added to the original patent must be underlined and text that is deleted from the original patent must be enclosed in single brackets. The specification amendment is informal because deletions have been shown using strike-through rather than single brackets.
Reissue Oath/Declaration
The reissue oath/declaration filed with this application is defective because it fails to identify at least one error in the original patent which is relied upon to support the reissue application. See 37 CFR 1.175 and MPEP § 1414. The error statement states that “[t]he instant continuation reissue application is being filed because the parent reissue application claims less than the patentee had a right to claim.” This error statement is improper because it is made with respect to a pending parent reissue application rather than the original patent. Any errors in the pending parent reissue application should be corrected by amendment in that reissue application during its pendency. In addition, if the instant reissue application is intended to broaden the claims of the original patent, then the error statement must specifically reference the claim of the patent that is being broadened (e.g., “claim 1”) and at least one word or phrase in the original patent claim wherein lies the error. See MPEP § 1414.
Claim Rejections - 35 USC § 251 - Defective Reissue Declaration
35 U.S.C. 251(a) states:
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
Claims 4-14 are rejected as being based upon a defective reissue declaration under 35 U.S.C. 251 as set forth above. See 37 CFR 1.175.
The nature of the defect(s) in the declaration is set forth in the discussion above in this Office action.
Claim Rejections - 35 USC §§ 251 - Original Patent
Claims 12-14 are rejected under 35 U.S.C. 251 for not claiming subject matter directed to the invention disclosed in the original patent. MPEP § 1412.01 explains that “[t]he reissue claims must be for the same invention as that disclosed as being the invention of the original patent.” This section of the MPEP provides the following guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent”:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
Further, the Federal Circuit addressed the “original patent” requirement of 35 U.S.C. 251 in Antares Pharma, Inc. v. Medac Pharma Inc. and Medac GMBH, 771 F.3d 1354, 112 USPQ2d 1865 (Fed. Cir. 2014). The Federal Circuit adopted the Supreme Court’s explanation from U.S.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp.1 that “a reissue claim is for the ‘same invention’ if the original patent specification fully describes the claimed inventions, but not if the broader claims ‘are [] merely suggested or indicated in the original specification.’ [U.S.S. Industrial Chemicals, 315 U.S.] at 676. ‘[I]t is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.’ Id.” Antares at 1359; see also id. at 1362. The Federal Circuit further stated that although wording in section 251 was changed from “same invention” to “original patent” no change in substance was intended. Id. at 1360.
The reissue claims in this application are directed to a wheel cover overlay assembly comprising, inter alia, a peripheral extended surround and an attachment system. Claim 12 specifies that “the attachment system comprises a plurality of snap tabs.” However, the original patent discloses that “[t]he present invention has a unique geometric shape which differs from … snap tabs.” Col. 2:46-50 (emphasis added). The original patent describes snap tabs only in the context of prior art wheel covers (see col. 1:65-2:15 and Fig. 2), which are disparaged for their tendency to fail and frequently cause separation of the wheel cover overlay from an underlying wheel rim. See col. 2:3-9. The patent disclosure then goes on to specifically define critical features of the “unique geometric shape” of Applicant’s inventive “hook-shaped members” (600a, 600b, Fig. 4A).
The criticality of this unique geometric shape is explicitly described at col. 9:17-29 of the patent specification, which states (with emphasis added):
The geometric shape of the hook-shaped member portion 600a and the hook-shaped member portion 600b described in Fig. 4A is critical in locking and maintaining in place the wheel cover overlay with extended surround of the present invention when installed. That is, when installed the hook-shaped member’s geometric shape makes contact with a vehicle’s rim in such a way that prevents separated caused by repeated use of the vehicle which is an enormous advantage over the prior art, as these prior art automotive wheel covers and aftermarket wheel cover overlays are prone to loosen over time with repeated use of the automobile and requiring numerous, labor intensive and costly repairs over the life span of the vehicle.
Considering the fact that the patent disclosure mentioned snap tabs only in the context of disparaged prior art, that the unique geometric shape of Applicant’s hook-shaped member portions are explicitly contrasted with snap tabs, and that the unique geometric shape of the hook-shaped members is explicitly disclosed as “critical” to the attachment function of the attachment system, the examiner concludes that the original patent does not disclose, as a separate invention, a wheel cover overlay assembly comprising a peripheral extended surround and an attachment system comprising snap tabs as now recited in claims 12-14 in this reissue application.
Claim Rejections - 35 USC §§ 251 and 112(a) - New Matter
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.
35 U.S.C. 251(a), cited above, states: “No new matter shall be introduced into the application for reissue.”
Claims 12-14 are rejected under 35 U.S.C. 251 and 112(a) as being based upon new matter added to the patent for which reissue is sought.
The added material which is not supported by the prior patent is as follows: “the attachment system comprises a plurality of snap tabs” including “a first snap tab” and “a second snap tab,” as recited in claim 12 and further defined in claims 13-14, depending from claim 12.
The patent specification explicitly states that “[t]he present invention has a unique geometric shape which differs from … snap tabs” (col. 2:46-50, emphasis added). As noted above, snap tabs are described only in the context of prior art wheel covers (see col. 1:65-2:15 and Fig. 2). The patent disclosure would not reasonably convey to one of ordinary skill in the art that Applicant’s disclosed attachment system would include the prior art snap tabs which are disparaged in the patent disclosure. Moreover, because snap tabs are mentioned only in the context of the prior art, the original disclosure does not describe the particularly claimed arrangement of snap tabs on major flanges of the wheel cover overlay assembly.
Claim Rejections - 35 USC § 112(b)
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 12-14 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.
The limitation “wherein the attachment system comprises a plurality of snap tabs” in claim 12, and the further description of the snap tabs in claims 13-14, is unclear because it appears to be inconsistent with the specification. It is unclear what would fall within the scope of the claimed “snap tabs” since the specifically explicitly states that the attachment features of the present invention are not only “different from … snap tabs” (col. 2:46-50) but also “critical in locking and maintaining in place the wheel cover overlay with extended surround of the present invention when installed” (col. 9:17-21). Claims 12-14 are indefinite due to the lack of correspondence between the specification and claims. See MPEP § 2173.03.
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.
Claim 4 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being clearly anticipated by Heck (U.S. Patent No. 5,595,423, hereinafter Heck).
Regarding claim 4, Heck discloses an improved wheel cover overlay assembly (wheel cover 13, Figs. 1-3) comprising an inboard surface area (i.e., the surface of the cover 13 that faces toward the wheel disc 12, at right in Fig. 3), an outboard surface area (i.e., the surface of the cover 13 that faces away from the wheel disc 12, at left in Fig. 3), a peripheral boundary (Fig. 3), a peripheral extended surround (outer end 70) having a first portion (A, annotated Fig. 3 below) extending upwardly and inwardly from the peripheral boundary and a second portion (outer annular lip 76, col. 4:33-36) extending downwardly from the first portion towards a wheel cover overlay central axis, and an attachment system (adhesive 82, col. 4:48-61).
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Claim 4 is rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being clearly anticipated by Bruce (U.S. Patent No. 7,300,116, hereinafter Bruce).
Regarding claim 4, Bruce discloses an improved wheel cover overlay assembly (wheel cover 22, Figs. 3-4 or 5) comprising an inboard surface area (i.e., the surface of the cover 22 facing toward the wheel 2, at left in Figs. 3-5), an outboard surface area (i.e., the surface of the over 22 facing away from the wheel 2, at right in Figs. 3-5), a peripheral boundary (peripheral edge 8, Fig. 1), a peripheral extended surround (outer periphery 37, Fig. 4, col. 5:16-18; or lip 45, Fig. 5, col. 6:10-20), having a first portion extending upwardly and inwardly from the peripheral boundary and a second portion extending downwardly from the first portion towards a wheel cover overlay central axis (see annotated details of Figs. 4-5 below), and an attachment system (protrusions 38, Fig. 1, “to mechanically secure the wheel cover 3 to the wheel 2,” col. 4:29-32; see also col. 5:18-33 and 49-51).
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Claims 4-6, 9, and 12-14 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being clearly anticipated by McCorry et al. (U.S. Patent No. 8,449,043, hereinafter McCorry).
Regarding claim 4, McCorry discloses an improved wheel cover overlay assembly (“multi-piece wheel cover including a first ‘outer’ wheel cover 16 and a second ‘inner’ wheel cover 18,” col. 4:35-39, Figs. 1-14) comprising an inboard surface area (52, Fig. 5), an outboard surface area (50, Fig. 1), a peripheral boundary (42, Figs. 3-4), a peripheral extended surround (“generally U-shaped or inverted outer end 40,” col. 5:48-50, Figs. 3-4) having a first portion extending upwardly and inwardly from the peripheral border (42) and a second portion extending downwardly from the first portion towards a wheel cover overlay central axis (see Figs. 3-4 and 14, similar to Heck as annotated above), and an attachment system (including snap tabs 72, Fig. 11; col. 7:36-46).
Regarding claim 5, McCorry further discloses the wheel cover overlay assembly (16, 18) comprises a plurality of lug nut towers (50B, Fig. 1) comprising through holes (“lug bolt mounting holes,” col. 6:21-29).
Regarding claim 6, McCorry further discloses the wheel cover overlay assembly (16, 18) comprises a plurality of major flanges (decorative windows 54, Fig. 5; col. 7:36-45) with walls (54A) protruding from the inboard surface area (52), wherein the plurality of major flanges (54) comprise a plurality of through holes (“windows,” col. 6:26-29) formed directly in the surface of the inboard surface area (50). The examiner notes that the term “carved” is a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. See MPEP § 2113. McCorry teaches a finished product that is the same as that described by the applicant and therefore meets the limitations as claimed.
Regarding claim 9, McCorry further discloses the attachment system comprises a plurality of hook-shaped members (tabs 72, which jut sharply from walls 54A and are thus considered to be “hook-shaped” as claimed) comprising at least a first hook-shaped member (72) on a first major flange (54) of the plurality of major flanges and a second hook-shaped member (72) on a second major flange (54) of the plurality of major flanges, the second major flange (54) opposing the first major flange (54; see Fig. 8).
Regarding claim 12, McCorry further discloses the attachment system comprises a plurality of snap tabs (tabs 72, which retain the wheel cover assembly “by a snap fit engagement,” col. 7:45-47) comprising at least a first snap tab (72) on a first major flange (54) of the plurality of major flanges and a second snap tab (72) on a second major flange (54) of the plurality of major flanges (see Fig. 8).
Regarding claim 13, McCorry further discloses the first snap tab (72) protrudes from a wall (54A) of the first major flange (54) and the second snap tab (72) protrudes from a wall (54A) of the second major flange (54).
Regarding claim 14, McCorry further discloses that the first and second snap tabs (72) comprise respective first and second snap tab rigid polymer edges (see edges of tabs 72 shown in Fig. 8, the tabs being formed of “plastic material” as part of the second wheel cover 18, col. 6:11-13, and therefore understood to be rigid polymer).
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 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over McCorry in view of Tataru (U.S. Patent Pub. 2022/0203760, hereinafter Tataru).
Regarding claim 7, McCorry teaches the claimed invention substantially as claimed, as set forth above for claim 6. McCorry does not disclose a plurality of minor flanges with walls protruding from the inboard surface area. However, Tataru teaches a wheel cover overlay assembly (35, Figs. 1-2) comprising a plurality of minor flanges (at smaller vent openings 38, Figs. 1-2 and 6; ¶ 28) with walls protruding from an inboard surface area (most clearly shown in Figs. 2 and 6), wherein the plurality of minor flanges comprise a plurality of through holes (“vent openings,” ¶ 28) directly formed2 into the surface of the inboard surface area (see Figs. 2 and 6; compare Applicant’s through holes 66b, Fig. 8C). 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 McCorry by adding a plurality of minor flanges as taught by Tataru (e.g., as smaller flanges between the larger flanges of McCorry), in order to match an aesthetic design of the underlying wheel spokes.
Regarding claim 8, the modified McCorry teaches the claimed invention substantially as claimed, as set forth above for claim 7. McCorry does not teach the claimed combination of a tension tab guide plate, tension tab guide plate slit, vehicle emblem support device, tension tab, tension rotation device prong, tension rotation device opening, tension device fastener, and tension tabs assembly. However, 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). Tataru teaches that these components facilitate a secure attachment of the wheel cover to an underlying wheel without relying on screw fasteners or springs, for a more convenient and less complex attachment (¶¶ 9-10). 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 McCorry to include a tension tab guide plate, tension tab guide plate slit, vehicle emblem support device, tension tab, tension rotation device prong, tension rotation device opening, tension device fastener, and tension tabs assembly, as taught by Tataru, in order to facilitate a simple and convenient attachment of the wheel cover overlay assembly to an underlying wheel.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over McCorry in view of Wang (U.S. Patent Pub. 2013/0278043, hereinafter Wang).
Regarding claims 10 and 11, McCorry teaches the claimed invention substantially as claimed, as set forth above for claim 9. McCorry does not disclose that the first and second hook-shaped members each comprise the claimed combination a lip protruding from a longitudinal edge and curved arm edges extending from first and second ends of the longitudinal edge, as recited in claims 10 and 11. However, Wang teaches a wheel cover overlay assembly (cover A, Figs. 3 and 6-7) comprising a plurality of major flanges (12) and a plurality of hook-shaped members (retaining devices 2) comprising at least a first hook-shaped member (2) on a first major flange (12) and a second hook-shaped member (2) on a second major flange (see Fig. 3) opposing the first major flange (12), wherein the first hook-shaped member (2) comprises a first longitudinal edge (elongated rib 23, Figs. 6-7, ¶ 23), a first lip (at outward boundary of rib 23, Fig. 7; compare to Applicant’s lip 601a of edge 602a in Fig. 8C) protruding from the first longitudinal edge, a first curved arm edge (at first retaining block 22 with bevel faces 21 having a curved shape as shown in Fig. 7) extending from a first end of the first longitudinal edge (23), and a second curved arm edge (at second retaining block 22) extending from a second end of the first longitudinal edge, as recited in claim 10. The second hook-shaped member (2) on the opposing major flange (12) is understood to be a mirror-image of the first hook-shaped member (2), as shown generically in Fig. 3. Thus, Wang is clearly understood to disclose that the second hook-shaped member (2) also likewise comprises a second longitudinal edge (23), a second lip protruding from the second longitudinal edge, a third curved arm edge (22) extending from a first end of the second longitudinal edge, and a fourth curved arm edge (22) extending from a second end of the second longitudinal edge (see Fig. 7), as recited in claim 11. Wang teaches that this configuration facilitates a reversible snap-fit attachment of the wheel cover to an underlying wheel. See Wang ¶ 24. 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 McCorry by replacing McCorry’s first and second hook-shaped members (tabs 72) with first and second hook-shaped members in the configuration taught by Wang, in order to facilitate a secure yet reversible attachment of the wheel cover to an underlying wheel.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 4-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of U.S. Patent No. 11,254,160 (the ‘160 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because, with respect to instant claim 4, claim 1 of the ‘160 patent recites an inboard surface area, an outboard surface area, a peripheral boundary, a peripheral extended surround, and hook-shaped members that constitute an attachment system as claimed, and claim 3 of the ‘160 patent recites the peripheral extended surround “extends to cover an entire vehicle’s rim,” which appears to be directed to the same features of the peripheral extended surround recited in instant claim 4. The features of instant claims 5-11 are all recited in ‘160 patent claim 1.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of the ‘160 patent in view of McCorry.
Regarding claims 12-14, the ‘160 patent claims do not explicitly recite snap tabs. However, this feature is taught by McCorry, as set forth above in the rejection of claims 12-14 under 35 U.S.C. 103. 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 claims by replacing the hook-shaped members with snap tabs as taught by McCorry, since this involves the simple substitution of one known attachment system for a wheel cover overlay for another known attachment system for a wheel cover overlay, to yield predictable results.
Claims 4-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 11,453,236 (the ‘236 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because, with respect to instant claim 4, claims 1 and 7 of the ‘236 patent each recite an inboard surface area, an outboard surface area, a peripheral boundary, a peripheral extended surround, and hook-shaped members that constitute an attachment system as claimed, and claims 3-6 and 9 of the ‘236 patent each recite the peripheral extended surround “extends to cover an entire vehicle’s rim,” which appears to be directed to the same features of the peripheral extended surround recited in instant claim 4. The features of instant claims 5-11 are all recited in ‘236 patent claims 1 and 7.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of the ‘236 patent in view of McCorry.
Regarding claims 12-14, the ‘236 patent claims do not explicitly recite snap tabs. However, this feature is taught by McCorry, as set forth above in the rejection of claims 12-14 under 35 U.S.C. 103. 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 ‘236 patent claims by replacing the hook-shaped members with snap tabs as taught by McCorry, since this involves the simple substitution of one known attachment system for a wheel cover overlay for another known attachment system for a wheel cover overlay, to yield predictable results.
Claims 4-7 and 9-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,472,227 (the ‘227 patent).
Although the claims at issue are not identical, they are not patentably distinct from each other because, with respect to instant claim 4, claim 1 of the ‘227 patent recites an inboard surface area, an outboard surface area, a peripheral boundary, a peripheral extended surround, and hook-shaped members that constitute an attachment system as claimed, and claim 6 of ‘227 patent recites the peripheral extended surround “extends to cover an entire vehicle’s rim,” which appears to be directed to the same features of the peripheral extended surround recited in instant claim 4. The features of instant claims 5-7 and 9-11 are all recited in ‘227 patent claim 1.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of the ‘227 patent in view of Tataru.
Regarding claim 8, the ‘227 patent claims do not recite a tension tab guide plate and the other associated elements recited in instant claim 8. However, these features are taught by Tataru as set forth above in the rejection of claim 8 under 35 U.S.C. 103. 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 ‘227 patent claims by adding a tension tab guide plate and associated elements as taught by Tataru, in order to effectively lock the wheel cover overlay to the underlying wheel.
Claims 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of the ‘227 patent in view of McCorry.
Regarding claims 12-14, the ‘227 patent claims do not explicitly recite snap tabs. However, this feature is taught by McCorry, as set forth above in the rejection of claims 12-14 under 35 U.S.C. 103. 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 ‘227 patent claims by replacing the hook-shaped members with snap tabs as taught by McCorry, since this involves the simple substitution of one known attachment system for attaching a wheel cover overlay for another known attachment system for attaching a wheel cover overlay, to yield predictable results.
Claims 4-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-6 of copending Application No. 18/390,283 (the ‘283 application).
Although the claims at issue are not identical, they are not patentably distinct from each other because, with respect to instant claim 4, claim 4 of the ‘283 application recites an inboard surface area, an outboard surface area, a peripheral boundary, a peripheral extended surround, and hook-shaped members that constitute an attachment system as recited in instant claim 4. The features of instant claims 5-11 are all recited in ‘283 application claim 4.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 12-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-6 of the ‘283 application in view of McCorry.
Regarding claims 12-14, the ‘283 application claims do not explicitly recite snap tabs. However, this feature is taught by McCorry, as set forth above in the rejection of claims 12-14 under 35 U.S.C. 103. 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 ‘283 application claims by replacing the hook-shaped members with snap tabs as taught by McCorry, since this involves the simple substitution of one known attachment system for attaching a wheel cover overlay for another known attachment system for attaching a wheel cover overlay, to yield predictable results.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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.
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/Laura Davison/Reexamination Specialist, Art Unit 3993
Conferees:
/JOSHUA KADING/ /EILEEN D LILLIS/Reexamination Specialist, Art Unit 3993 SPRS, Art Unit 3993
1 315 U.S. 668 (1942).
2 The term “carved” is a product-by-process limitation, as discussed above in the rejection of claim 6.
