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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/7/2026 has been entered.
Election/Restrictions
Claims 15 and 16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/12/2022.
Claims 15 and 16 are directed to the extension and light unit, which the disclosure as originally filed clearly shows in Figures 5-10 (non-elected Species 2-4 of the 5/17/2022 Election Requirement) and not in Figures 1-4 (elected Species 1).
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(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US 2010/0230455) in view of Holliday (US 5129559) and Harnetiaux (US 2006/0180063.
Wang discloses a bike carrier assembly comprising: a connection unit adapted to be connected to a vehicle (10-31), an adaptor (30) connected to the connection unit, the adaptor being a U-shaped tube having two open ends and including multiple first holes (34); a bar (302 farthest from hinge 31 meets scope of being a ‘bar’) connected between the two ends of the U-shaped tube capable of reinforcing a strength of the adaptor (functional recitation); at least one bike carrier (302 closest to hinge 31) selectively connected to the adaptor, wherein the bike carrier includes multiple second holes (304), multiple locking members (307) extend through the second holes and the first holes to connect the bike carrier to the adaptor; except does not expressly disclose the caps as claimed.
However, Holliday teaches providing cargo carrier tubing with end caps (28) as claimed.
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to add the end caps taught by Holliday to the tubing taught by Wang, in order to provide a smooth, finished end thereto as taught by Holliday (col. 3, ll. 53-57).
Finally, Harnetiaux teaches tethering an end cap (98) to another portion of a device frame via a strap (100).
At the time of the invention, it would have been obvious to a person having ordinary skill in the art to tether the end caps taught by Holliday to the bar taught by Wang as modified above via a tether as taught by Harnetiaux, in order to prevent losing the cap when not in use as taught by Harnetiaux.
Response to Arguments
Applicant's arguments filed 1/17/2026 have been fully considered but they are not persuasive.
Applicant argues that the Wang bar is structurally and functionally different than the claimed bar. This argument has been considered, however is not persuasive. Contrary to applicant’s assertion that the Wang bar 302 does not provide a function of “to reinforce a strength of the adaptor”, the Wang bar 302 being bolted to each of the end portions of the U-shaped tube would necessarily provide at least some reinforcement of the strength of the adaptor by fixing the distance between the ends of the U-shaped tube and preventing the ends from spreading apart or inwardly accidentally. The bar 302 being bolted to each end, having a fixed connection, would rigidify the U-shaped tube as one of ordinary skill in the art would readily recognize. In light of the functional nature of the claim limitation “to reinforce a strength of the adaptor”, the scope of the claims is met.
Applicant argues that Wang teaches away from the claimed rigid reinforcing bar due to its adjustability/pivoting. This argument has been considered, however is not persuasive in light of Wang’s pivoting functionality being fully in tact with its bar (302) installed.
A teaching away requires a reference to actually criticize, discredit, or otherwise discourage the claimed solution. See In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (“The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed").
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, the motivation to make the proposed combinations comes directly from the references themselves, as set forth in the rejection above.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant's argument that Harnetiaux is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Harnetiaux is reasonably pertinent to the particular problem with which the inventor was concerned, namely prevention of loss of the end cap when not installed. That Harnetiaux’s end caps are for preventing air loss does not impact the relevance of the teachings noted above on the instant invention and rejection.
Applicant is reminded that “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.”KSR, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.”Id. Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.” 82 USPQ2d at 1396.
For the reasons stated above as well as those set forth in the rejections above, applicant’s arguments are not persuasive and the rejections are maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER N. HELVEY whose telephone number is (571)270-1423. The examiner can normally be reached Monday-Friday 10am-7pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at 571-272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PETER N HELVEY/ Primary Examiner, Art Unit 3734
May 5, 2026
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