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 .
Amendment filed 7/27/2026 has been entered. Claims 1, 3, 5, and 18-24 remain pending in the present application.
Election/Restrictions
Newly submitted claim 25 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Applicant’s newly presented claim 25 relates to the original claimed invention as a combination subcombination. The inventions are distinct since the combination as claimed does not require the particulars of the subcombination since the combination does not require the relative size difference between the opening and cavity for instance. Further, the subcombination has a separate utility for mounting bicycle brakes or decorations on bicycle handles.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 25 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, and 5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Miki US 9073595 (hereinafter Miki).
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Re. Cl. 1, Miki discloses: A mount (16, Fig. 2) for a control device for a bicycle (see Fig. 2, capable of being used with a control device in the same manner as 12/38), the mount comprising: a securing portion (20, 22a Fig. 2) having a first portion (20, Fig. 2) and a second portion (22a, Fig. 2); the first portion configured to be disposable entirely around an outer surface of a handlebar of the bicycle (see Fig. 2), the second portion extending away from the first portion (see Fig. 1-3, laterally away from 20 along axis X so that 36 is spaced from 20) and configured to extend along an axis of the handlebar and in contact with the handlebar (see Fig. 1-3, along D1), the second portion of the securing portion having an outer surface (see Fig. 2-3); a housing portion (36, Fig. 2) integrally formed with the second portion of the securing portion (see Fig. 2-3, 36 and 22a are integrally secured), and the housing portion protruding from outer surface of the second portion of the securing portion in a radial direction with respect to the axis of the handlebar (see Fig. 2 and 6); and a cavity (36c, Fig. 5) within at least the housing portion (see Fig. 5), wherein the housing portion comprises a shoulder (36b, Fig. 5) that defines an opening through the housing portion to the cavity (see 36a, Fig. 5), the housing protruding from the outer surface of the second portion of the securing portion such that the opening is located at a distance from the outer surface of the second portion of the securing portion (see Fig. 2-3 and 5), and wherein a size of the opening is smaller than a size of the cavity (see Fig. 5); and wherein the entirety of the housing portion is configured to extend along a length of the handlebar (see Fig. 2) such that the control device is positioned at least partially between the handlebar and the shoulder of the housing (see Fig. 2, the control device is capable of being positioned as claimed in the same manner as 38).
Re. Cl. 3, Miki discloses: the securing portion comprises a first fastener receiving portion and a second fastener receiving portion opposite the first fastener receiving portion (see Fig. 2, where 21 passes through).
Re. Cl. 5, Miki discloses: the securing portion and the housing portion are different parts of a one-piece, unitary structure (Col. 6, Lines 12-17).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 18-22 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Miki.
Re. Cl. 18, Miki discloses: A mount (16, Fig. 2) for a control device for a bicycle (see Fig. 2, capable of being used with a control device in the same manner as 12/38), the mount comprising: a securing portion (20, 22a Fig. 2) configured to be disposable around an outer surface of a handlebar of the bicycle (see Fig. 1), and the securing portion having a first end (20, Fig. 2) and a second end (end with 22a, Fig. 2), the first end of the securing portion configured to extend around the handlebar to a greater extent than the second end (see Fig. 1); a housing portion (36, Fig. 2) integrally formed with the securing portion (Col. 6, Lines 12-17) such the housing portion protrudes from the securing portion (see Fig. 1-2, 36 protrudes outward from 20, 22a), the control device configured to be removable from the housing portion and securing portion of the mount (see Fig. 2, via 40 and 38); a cavity (36c, Fig. 5) within at least the housing portion (see Fig. 2, the housing 36 is shaped so that it can be fitted to a control device in the same manner as 38); and an opening (36a, Fig. 5) through the housing portion to the cavity (see Fig. 5).
Re. Cl. 19, Miki discloses: a shoulder (36b, Fig. 6) extending from the housing portion and defining the opening through the housing portion to the cavity (see Fig. 6).
Re. Cl. 20, Miki discloses: a first fastener receiving portion extending from the securing portion; and a second fastener receiving portion extending from the securing portion (see Fig. 2, opposing ends of 20 where 21 passes), wherein the second fastener receiving portion is disposed opposite the first fastener receiving portion with respect to a central axis of the securing portion (see Fig. 2).
Re. Cl. 21, Miki discloses: the securing portion (22a) includes a fastener receiving portion (see annotated figure 2) having an opening (see annotated figure 2) sized and shaped to receive a fastener (21, Fig. 2), and the fastener receiving portion and the housing portion are formed as a single piece (see Fig. 2, the annotated fastener receiving portion and housing 36 are formed as a single piece as shown).
Re. Cl. 22, Miki discloses: the first end of the securing portion includes a fastener receiving portion having an opening sized and shaped to receive a fastener (see Fig. 2, openings which receive fastener 21).
Re. Cl. 24, Miki discloses: the cavity opens upwardly when positioned on the bicycle (see Fig. 1-5, the cavity 36c opens upwardly towards the handlebar when secured to the handlebar H; further the Examiner recognizes due to the adjustable nature of 20, the device is capable of being positioned on the handlebar in a variety of positions/orientations that position the cavity as desired by the user, including opening upwardly as claimed and shown in Fig. 1).
Re. Cl. 18, Miki does not disclose that the cavity within the housing portion having an asymmetrical oval shape. However, 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 shape of the cavity in Miki to be an asymmetrical oval shape since the court held that the configuration/shape of a device was a matter of design choice which a person of ordinary skill would have found obvious absent persuasive evidence that the particular configuration/shape was significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) Please note that in the instant application, Applicant has not disclosed any criticality for the claimed limitations.
Re. Cl. 23, Miki discloses a size of the opening is smaller than a size of the cavity (see Fig. 2), and the opening having a length greater than its width (see Fig. 2, the length of the opening extending in a direction akin to D2 is greater than the width extending along D1), however the length of the opening extends transverse to the length of the handlebar. Miki does however disclose an additional opening (26a) which aligns with the opening in the housing portion (see Fig. 1-2) so that the device (12) can be adjusted in two dimensions relative to the handlebar. As can be seen in Fig. 1-2 and 5, the opening (26a) has a length and a width, with the length being greater than the width and when assembled, the length of the opening is configured to extend along a length of the handlebar (see Fig. 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to switch the openings (26a) and (36a) in Miki so that the opening in housing portion (36) extends along the length of the handlebar since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Einstein, 8 USPQ 167. Please note that in the instant application, Applicant has not disclosed any criticality for the claimed limitations.
Response to Arguments
Applicant's arguments filed 7/27/2026 have been fully considered but they are not persuasive.
Re. Applicant’s argument that Miki does not disclose the limitations of amended claim 1, the Examiner disagrees. Applicant alleges that Miki does not disclose that the housing portion protrudes from the outer surface of the second portion in a radial direction with respect to the axis of the handlebar. It is the Examiner’s position that Miki does disclose this configuration as can be seen in Figs. 2 and 6 respectively. The Examiner identifies the housing portion as (36) and the second portion as (22a). As can be seen in Figs. 2 and 6 for instance, the housing portion (36) protrudes radially with respect to the axis of the handlebar since the radial direction is a direction perpendicular to D1 and the axis of the handlebar would be along D1. Clearly, as shown in Fig. 6, portion (36) protrudes outward from (22a) in a radial direction of the handlebar (H) to mate with 26. Therefore, it is the Examiner’s position that the Miki reference meets Applicant’s claim language and Applicant’s argument is considered but not persuasive.
Re. Applicant’s argument that Miki does not anticipate claim 18 since it does not disclose that the cavity is an asymmetrical oval shape, the Examiner wishes to point out that while the claim is not anticipated, it is the Examiner’s position that this limitation does not patentably distinguish from Miki. It is the Examiner’s position that this limitation would have been obvious and attention is directed to the rejection of claim 18 above. Applicant’s argument has been considered but does not apply to the current rejection.
Re. Applicant’s argument that Miki does not disclose that the cavity opens upward when positioned on the bicycle, the Examiner disagrees. Attention is drawn to the rejection of claim 24 above as to how Miki would disclose such a configuration. Applicant’s argument is considered but is not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kawakami US 2007/0199401 discloses the known use of an oval shaped cavity similar to what is claimed in Applicant’s amended claim 18.
THIS ACTION IS MADE FINAL. 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 CHRISTOPHER E GARFT whose telephone number is (571)270-1171. The examiner can normally be reached Monday-Friday 8:00 a.m. to 5:00 p.m..
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, Terrell McKinnon can be reached at (571)272-4797. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER GARFT/Primary Examiner, Art Unit 3632
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