The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Final Office Action
Examiner’s Remarks
The response filed 9/9/2025, wherein amendments were made to the specification, written claim, and reproductions, is acknowledged. The amended specification and written claim overcome the objections. The amended reproductions do not overcome the rejection under 35 U.S.C. § 112(a) and (b). Furthermore, the amended reproductions necessitate a new matter rejection under U.S.C. § 112(a). Additionally, upon further examination, a new refusal under 35 U.S.C. § 102(a)(1) has been identified. Accordingly, the claim is refused under U.S.C. §§§ 112(a), 102(a)(1), and 112(a) and (b) and is MADE FINAL in the following action.
Final Refusal
35 U.S.C. 112(a)
The claim is FINALLY REFUSED under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph as failing to comply with the description requirement thereof since the replacement reproductions are not supported by the original disclosure. The original disclosure does not reasonably convey to a designer of ordinary skill in the art that applicant was in possession of the design now claimed at the time the application was filed. See In re Daniels, 144 F.3d 1452, 46 USPQ2d 1788 (Fed. Cir. 1998); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).
There is no support in the original disclosure for the vehicle wheels shown in the amended reproductions 1.2, 2.2, 3.2. Specifically, the amended reproductions 1.2, 2.2, 3.2 differ from the original reproductions by overall lightness and tonal treatment. This alters the claimed appearance and constitutes new matter (see examples below).
Reproduction 1.2 original
Reproduction 1.2 amended
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648
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632
619
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Reproduction 2.2 original
Reproduction 2.2 amended
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553
581
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585
663
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Reproduction 3.2 original
Reproduction 3.2 amended
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631
668
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659
621
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To overcome this rejection, applicant may attempt to demonstrate (by means of argument or evidence) that the original disclosure establishes that he or she was in possession of the amended claim. Alternatively, applicant may amend the reproductions to be consistent in appearance with the original disclosure.
35 U.S.C. § 102(a)(1)
The claim is FINALLY REFUSED under 35 U.S.C. § 102(a)(1) as being clearly anticipated by the examiner’s Non Patent Document U, an Internet posting from Facebook.com on April 17, 2024 (hereinafter “Antera Wheels”) because 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.
The appearance of Antera Wheels is substantially the same as that of the claimed design, as both designs exhibit identical spoke patterns and overall edge conditions. The culmination of the similarities described result in two designs that are substantially the same and thus, the reference anticipates the claimed design.
Claimed Design
Antera Wheels
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637
635
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The ordinary observer test is the sole test for anticipation. See e.g., International Seaway Trading Corp. v. Walgreens Corp., 589 F.3d 1233, 1237-38, 1240, 93 USPQ2d 1001 (Fed. Cir. 2009) and MPEP § 1504.02.
Two designs are substantially the same if their resemblance is deceptive to the extent that it would induce an ordinary observer, giving such attention as a purchaser usually gives, to purchase an article having one design supposing it to be the other. See e.g., Door-Master Corp. v. Yorktowne, Inc., 256 F. 3d 1308 (Fed. Cir. 2001) citing Gorham Co. v. White, 81 U.S. 511, 528 (1871).
Applicant’s attention is directed to MPEP 706.02(b)(1) for information on overcoming the refusal under 35 U.S.C. § 102(a)(1).
35 U.S.C. § 112(a) and (b)
The claim is FINALLY REFUSED under 35 U.S.C. 112(a) and (b) or pre-AIA 35 U.S.C. 112, first and second paragraphs, as the claimed invention is not described in such full, clear, concise and exact terms as to enable any person skilled in the art to make and use the same, and fails 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 inventor or applicant) regards as the invention.
The claim is nonenabling and indefinite because portions shown in reproductions 1.2, 2.2, 3.2 indicate claimed structures that cannot be fully understood without further clarification. The provided views do not inform the depth, contour, and complete configuration of the portions and their interactions with each other. The limited views leave one resorting to conjecture in determining the appearance of the claimed design (see annotated portions below).
Reproduction 1.2
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Reproduction 2.2
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Reproduction 3.2
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839
873
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When applicant asserts the design is applied to a three-dimensional article, the drawing and specification must be commensurate with the protection sought.[1] A design patent, therefore, should disclose the configuration and complete appearance of the article in which the design is embodied, so fully, clearly and with such certainty as to enable those skilled in the art to make the article without being forced to resort to conjecture.[2]
“[I]nadequate disclosure may well hinder the judicial determination as to whether the purported novelty and invention are genuine.[3] [I]t has been held that when contour is an important part of a design, failure to disclose it fully in the drawing will be fatal to the patent.”[4]
To overcome the above rejection, applicant may demonstrate and persuasively show the errors in the merits of the rejection. However, is applicant does not contest the merits of the rejection, applicant may overcome the refusal by disclaiming the portions in reproductions 1.2, 2.2, 3.2 which are considered indefinite and nonenabling by converting them to broken line, deemphasizing/lightening the portions within the broken line, and amend the specification to include a statement that the portions of the VEHICLE WHEEL RIM shown in broken lines form no part of the claimed design (see MPEP 1503.02(III)).
Replacement Reproductions
Although not required, new reproductions are likely necessary to overcome the aforementioned rejection. If applicant elects to prepares new reproductions, care must be exercised to avoid introduction of anything which could be construed to be new matter prohibited by 35 U.S.C. § 132 and 37 CFR § 1.121.
Any amended replacement drawing sheets 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 reproductions 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 examiner does not accept the changes, the applicant will be notified and informed of any required corrective action in the next Office Action.
Conclusion
The claim is FINALLY REFUSED under 35 U.S.C. § 112(a) and (b).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM MAGER whose telephone number is (571)272-9780. The examiner can normally be reached on Monday - Friday, 10:00am - 6:00pm.
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, Chris P. McLean can be reached on (571) 270-1996. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADAM C MAGER/Primary Examiner, Art Unit 2923
1[] Philco, id. at 423
2[] Ex parte Salsbury, 38 USPQ 149 (ComrPats 1938)
3[] Philco Corporation v. Admiral Corporation, 131 USPQ 413 (DC Del 1961) citing (Pennsylvania Crusher Co. v. Bethlehem Steel Co., 193 F.2d 445, 92 USPQ 31 (3 Cir. 1951)).
4[] Ex parte Mygatt, 171 O.G. 1257, 1911 C.D. 186.