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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/2/2026 has been entered. Claims 1, 3, 5 and 18-23 remain pending in the present application.
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, 5, and 18-22 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 and the second portion being integrally formed (Col. 6, Lines 12-17); 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 the length of the handlebar and in contact with the handlebar (see Fig. 1-3), 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 protruding from outer surface of the second portion of the securing portion (see Fig. 2); 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).
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 that the mount is a one-piece, unitary structure (see Col. 6, Lines 12-17), and the housing portion and protruding 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 fitted to the shape of the control device (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); wherein the cavity of the housing portion is configured to receive the entirety of the control device (see Fig. 2, the cavity of the housing 36 is configured to have a control device positioned fully therein in the same manner as 38).
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).
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 23 is rejected under 35 U.S.C. 103 as being unpatentable over Miki.
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 4/2/2026 have been fully considered but they are not persuasive.
Re. Applicant’s argument that Miki does not disclose that the first and second portions of Miki are integrally formed as required by claims 1 and 18, the Examiner disagrees. The Examiner identifies the first and second portions are being parts (20) and (22a) as can be seen in Fig. 2 for instance. While Miki does illustrate that these parts are separate parts secured together (see Fig. 2, using 23), Miki also discloses that these parts can be integrally formed in Col. 6, Lines 12-17. Specifically, Miki states “In the illustrated embodiment, the adapter member 22 is a separate member from the mounting clamp 20. However, it will be apparent to those skilled in the bicycle field from the present disclosure that the adapter member 22 can be integrally provided with the mounting clamp 20 as a one-piece unitary member. Namely, the mounting member 16 can integrally provided as a one-piece unitary member. The second portion 36 can be integrally provided with the mounting clamp 20 as a one-piece unitary member.” Therefore, it is the Examiner’s position that Miki does disclose the limitations now amended into claims 1 and 18. Applicant’s argument has been considered but is not persuasive.
Re. Applicant’s argument that Miki does not disclose the limitation “the cavity of the housing portion is configured to receive the entirety of the control device,” the Examiner disagrees. Applicant’s invention is directed towards a mount intended to be used with a control device not a combination of a mount and the control device. Therefore, the limitations referring to the control device is an intended use recitation which merely requires the capability of being used in that manner. The Examiner maintains that Miki is capable of being used as discussed above in the rejection of claim 18. Specifically, the housing portion is formed as claimed and is configured to support a control device therein in the same manner as it supports (38). Applicant alleges that in order to meet Applicant’s limitation, there would necessarily be a modification of Miki to accommodate a control device. However, this is not commensurate in scope with the rejection at hand since the rejection is a 102 rejection rather than a 103 rejection and thus does not include a modification. Applicant further alleges that Miki does not have the capability to support a control device and the “configured to language” should be afforded the meaning that the term would have to a person of ordinary skill in the art. It is the Examiner’s position that Miki does have the ability to support a control device and has applied the language in a manner consistent with knowledge of those having ordinary skill in the art. As discussed above, the housing of Miki has the claimed structure required by Applicant’s claims (i.e. shoulder, cavity, opening, etc.) and compared to the housing shown in Fig. 5 of Applicant’s invention, the housings are substantially similar. In the same manner that Applicant’s housing (305) is “configured to receive the entirety of the control device,” Miki’s housing is configured to receive an entirety of a control device so long as the control device is sized to fit within Miki’s housing. Applicant’s claims and specification do not require a particular control device having particular dimensions/configurations and therefore Applicant’s argument that somehow Miki’s housing is not configured to receive an entirety of a control device while their housing is has been considered but is not persuasive. Applicant does not persuasively argue why the Miki housing is not configured to receive an entirety of a control device (i.e. having a structure which makes it impossible, having a shape which is incompatible with a required control device, etc.) and based on the similarity of Applicant’s disclosed housing and Miki’s, the Examiner maintains that Miki’s housing is configured to be used in the claimed intended use.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Takeuchi US 2014/0026710, Kosaka US 2014/0137696, Cesur US 7841258, and Tiong US 2006/0053954 disclose other known mounts for handlebars which are presented to the Applicant for their consideration.
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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