Detailed Action1
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 12, 2025 has been entered.
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim Objections
Claim 34 is objected to because of an informality: “awheel” should be changed to “a wheel”, and, “ae” should be changed to “a” in lines 7 and 8, respectively. Claim 36 is objected to because of an informality: “awheel” should be changed to “a wheel”. Appropriate correction is required.
Rejections under 35 USC 112
The following is a quotation 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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 of carrying out his invention
Claims 27-38 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 27, 34, and 36 each recite the bead ring pivots about the bolt along a single major axis defined by the elongated pilot hole. Applicant’s originally filed disclosure teaches the bead ring pivoting around a pivot point defined by the fulcrum and pivoting around the bolt (see figures 5-10 of Applicant’s drawings; see also ¶ [0060] & [0067] of Applicant’s originally filed specification). Thus, one of skill in the art would not reasonably believe Applicant had possession of this limitation.
Claim 27 also recites a closed group of elements to attach a tire to a wheel (since the transition phrase is “consisting of”), and wherein the body of the claim recites “a bolt”. Applicant’s originally filed specification and drawings teach a bead ring that attaches a tire to a wheel via many bolts (see figures 11 & 19, ¶ [0001], [0006] & [0011]). One of skill in the art appreciates that one bolt would not be able to adequately secure/clamp the tire to the bead ring. Thus, Applicant’s disclosure does not reasonably convey to one of skill in the art that a combination including only a single bolt can adequately attach a tire to a wheel such that the tire and wheel can be used as intended.
The examiner notes that the original claims in this application included a claim directed to a combination consisting of a wheel, bead ring, and a bolt. While original claims are generally viewed as part of the written description, “issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing.” See MPEP 2163(1)(A). In addition, “The specification must still be examined to assess whether an originally-filed claim has adequate support in the written disclosure and/or the drawings.” See MPEP 2163(I). As detailed above, claim 27 is not described with sufficient particularity and/or contradicts the originally filed specification and drawings which teach attaching a tire to a wheel with a plurality of bolts in a plurality of threaded holes. Thus, one of skill in the art would not recognize that Applicant had possession of claim 27 at the time of filing.
Regarding claims 34 and 35, Applicant’s originally filed disclosure does not teach providing a kit/assembly that only consists of a bead ring and a bolt. Applicant’s originally filed claims teach a system/combination consisting of a bead ring, bolt and wheel. Further, as detailed above, one of skill in the art would not believe Applicant had possession of an assembly that consists of only one bolt.
Claims 28-33 and 37-38 are rejected for depending from one of claims 27 and 36.
The following is a quotation of 35 U.S.C. 112:
(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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 27-38 are rejected under 35 U.S.C. 112 (b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Regarding claim 27, it is unclear if the fulcrum must be a separate element from the wheel, bead ring, and bolt, or if the fulcrum is part of one of the other elements. Applicant’s disclosure teaches the fulcrum being on the bead ring or the wheel, and claim 27 states the fulcrum is integrally formed with the bead ring or wheel. However, introducing an element in its own line generally means the element is a separate component of the combination. For purposes of examination, this limitation will be interpreted as the fulcrum being an element on another component of the combination. If this interpretation is corrected, the examiner recommends deleting “a fulcrum” and adding something similar to the following at the end of the claim: “wherein one of the bead ring and the wheel comprises a fulcrum …”.
If “fulcrum” were interpreted as a separate element from the bead ring or wheel, then claim 35 would be rejected under 112d for adding another element to claim 34 (wherein the transition phrase of claim 34 is “consisting of”.
Claim 27 recites the outer lip disposed about an outer edge of the wheel and configured to receive a tire bead of the tire therein. It is unclear how a lip/outer edge can receive the tire bead therein since the outer edge is not hollow. For purposes of examination, this limitation will be interpreted as the lip receiving the tire bead thereon.
Regarding claims 27, 34, and 36, and as further detailed in the 112a rejection above, it is unclear how the bead ring can pivot about the bolt along a single major axis defined by the elongated pilot hole. For prior art purposes and compact prosecution, this limitation will be interpreted as: “the bead ring pivots about the bolt”.
Claim 31 recites configured to about the bolt. This limitation is awkward and confusing. For purposes of examination, this limitation will be interpreted as: configured to pivot about the bolt.
Claims 28-30, 32-33, 35, and 37-38 are rejected for depending from one of claims 27, 34, or 36.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 27-31, 34, 36, and 38 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2013/0147255 (“Rider”) in view of US Pat. No. 1,216,240 (“Lowe”), FR-650873-A (“FR873”).
Regarding claim 27, Rider teaches a combination for attaching a tire to a wheel (¶ [0008]), the combination consisting of: a wheel (100) having an outside surface defining an outer lip (111 and/or 158) and a threaded hole (140) (figs. 4 & 8, ¶ [0029] & [0033]-[0034]), the outer lip disposed about an outer edge of the wheel and configured to receive a tire bead of the tire therein (fig. 8), the threaded hole positioned radially inward from the outer lip (fig. 8); a bead ring (114) having a clamping portion (153) (fig. 8, ¶ [0034]), the bead ring defining an [enlarged] pilot hole and a bead ring ball seat (146) radially inward of the clamping portion (fig. 8, ¶ [0033]), the bead ring ball seat disposed about the [enlarged] pilot hole (fig. 8); a fulcrum extending from the bead ring or the wheel (fig. 8, ¶ [0034], i.e. portion of bead ring extending inward from surface 153 and comprising surface 157), the fulcrum integrally formed with the bead ring or the wheel (fig. 8); and a [threaded stud] (142) disposed through the pilot hole and threadably engaged with the threaded hole of the wheel to secure the bead ring to the wheel (fig. 8, ¶ [0033]).
Claim 27 also recites the fulcrum engaging the bead ring or the wheel such that the bead ring pivots about the bolt along a single major axis defined by the elongated pilot hole when the clamping portion of the bead ring clamps the tire bead in the outer lip of the wheel to retain the tire to the wheel.
One of skill in the art appreciates that, depending on how the nuts 150 of Rider are tightened, the bottom of surface 157 of the bead ring can contact bottom of surface 159 of the wheel such that the bead ring is rotated about mating surfaces 157 & 159 (figs. 8 of Rider). Since the bolts of Rider apply an inward force to a radially inner end of the bead ring, and, the tire bead of the tire will apply an outward force to a radially outer end of the bead ring (see fig. 8 of Rider), the bead ring can tilt with respect to the wheel so that the bottom of surface 157 of the bead ring contacts bottom of surface 159 prior to the nuts all being fully tightened such that the bead ring pivots about this fulcrum to further clamp the tire bead (as illustrated in fig. 8 of Rider, tilting of the bead ring will also be allowed via the semispherical seat 146 and enlarged hole of the bead ring 114). Lowe (described more below) also teaches that the elongated pilot hole allows the clamping member to pivot about the fulcrum on a radially inner side thereof (fig. 1, page 2 lines 68-78). Thus, either of the axially extending portion of the bead ring comprising surface 157 or the axially extending portion of the wheel comprising surface 159 can be interpreted as a fulcrum.
Rider fails to explicitly teach the enlarged pilot hole being elongated. However, this would have been obvious in view of Lowe.
Lowe is also directed to securing a tire to a wheel by fastening a component 14/15 of a wheel with a bolt 17 (fig. 1, page 2 lines 14-36 & 68-89). The component 14/15 configured to tilt with respect to the bolt has a spherical/ball seat 25 configured to seat a spherical/ball portion 19 of the fastener, and, an elongated pilot hole 24 wherein the ball portion 19 is nestled at least partially within the ball seat 25 and elongated hole 24 (figs. 1 & 3, page 2 lines 62-78).
In this case, both Rider and Lowe are directed to securing a tire to a wheel by fastening parts of a wheel with a fastener wherein the fastener comprises a ball seat configured to rest in a corresponding ball seat of the bead ring, and an enlarged hole that allows the element being fastened to pivot about the bolt. Lowe teaches a known structure between the bolt and the tilting component so that undue stress is not put on the bolt, wherein the structure comprises a spherical seat configured to receive a corresponding spherical portion of the fastener, and an elongated hole of the component receives the bolt shaft. Lowe teaches one of skill in the art that the combination of the elongated hole and the ball and socket joint will better allow the component to tilt with respect to the bolt without putting undue stress on the bolt. Thus, it would be obvious to modify Rider so that the enlarged hole of the bead ring of Rider is substituted with an elongated hole.
Rider teaches a threaded shaft 142 wherein a washer 148 with a ball seat and a nut 150 are attached thereto (fig. 8). Thus, Rider fails to explicitly teach the threaded stud being a bolt comprising a bolt ball seat having a profile that pivotally engages the bead ring ball seat of the bead ring. However, this would have been obvious in view of FR873.
FR873 is also directed to attaching a tire f to a wheel wherein the bolt is screwed into a threaded hole of the wheel (figs. 5 & 6, lines 13-15). FR873 teaches that it is known to form a ball and socket joint with the ball seat located on a bottom of the head of the bolt (figs. 5-6, lines 60-63, wherein all references to the FR873 specification refer to the machine translation submitted with the Office action mailed on December 18, 2024).
In this case, each of Rider and FR873 are directed to attaching a tire to a wheel by screwing a fastener into a threaded hole in the wheel. While Rider teaches the fastener comprising a nut and a washer having a ball seat, FR873 teaches one of skill in the art that the same function can be obtained by providing a bolt with a head and a threaded shaft wherein the bottom of the head comprises the ball seat. Thus, it would be obvious and predictable to substitute the fastener of Rider with a bolt having a threaded shaft and a head having a ball seat on a bottom thereof.
Since the preamble of claim 27 ends with “consisting of”, no other element can be present that helps to secure the tire to the wheel. As taught by Rider et al., the only elements needed that help secure the tire to the wheel are the wheel, bead ring, and bolts. The examiner is taking Official Notice that it is well known to sell components individually or together with other needed parts. Thus, it would be obvious to sell/provide a kit/combination that comprises only one bolt.
Claim 28 recites the bolt has a hexagonal head. The examiner is taking Official Notice that it is well known for bolt heads to have a hexagonal shape. Thus, it would be obvious to modify the bolt head of Rider et al. so that it is hexagonal.
Claim 29 recites the bolt has a thread diameter. One of skill in the art appreciates that the thread of the bolt of Rider et al. has a diameter. Rider et al. fails to explicitly teach the thread diameter is selected from the group consisting of 1/4 inch, 3/8 inch, and 5/16 inch. However, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In this case, one of skill in the art having ordinary creativity would appreciate that the size of the bolts and threads can vary and still perform as intended. Applicant also acknowledges this as paragraphs [0002] & [0047]-[0048] of Applicant’s originally filed specification state the threads can have any diameter and density of threads per inch. Thus, this limitation does not appear to be critical or produce unexpected results. Therefore, this limitation does not patentably distinguish over Rider et al.
Claim 30 recites the bolt has a thread density. One of skill in the art appreciates that the thread of the bolt of Rider et al. has a thread density. Rider et al. fails to explicitly teach the thread density is in a range of 16 and 24 threads per inch. However, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In this case, one of skill in the art having ordinary creativity would appreciate that the density of the threads can vary and still perform as intended. Applicant also acknowledges this as paragraphs [0002] & [0047]-[0048] of Applicant’s originally filed specification state the threads can have any diameter and density of threads per inch. Thus, this limitation does not appear to be critical or produce unexpected results. Therefore, this limitation does not patentably distinguish over Rider et al.
Claim 31 recites the bolt defines a bolt axis that is orthogonal to the outside surface of the wheel, the bead ring configured to pivot about the bolt without deflecting the bolt axis from orthogonal to the outside surface of the wheel. As illustrated in fig. 8 of Rider the bolt axis is orthogonal to the outside surface of the wheel. As detailed in the rejection to claim 27 above, the bead ring is capable of pivoting about the bolt due to the elongated pilot hole. Thus, due to the elongated pilot hole, the bead ring is capable of rotating about the bolt without deflecting the bolt axis.
All the limitations of claim 34 and 36 are required by claim 27. Rider in view of Lowe and FR873 teach these limitations as detailed in the rejection to claim 27 above. The preamble of claim 34 also ends with “consisting of”—thus no other element can be present except for the bead ring and the bolt. The examiner is taking Official Notice that it is well known to sell components individually or together with other needed parts such as fasteners. Thus, since a bolt is needed to secure the bead ring, it would be obvious to sell a kit that comprises the bead ring and a bolt.
Claim 38 recites a system comprising: a wheel; a tire; and a bead ring assembly according to claim 36 secured to the wheel and clamping the tire to the wheel. Rider in view of Lowe and FR873 teach the limitations of claim 36 as detailed in the above rejections to claims 27 and 36. Rider further teaches a wheel (100) and a tire, wherein the bead ring is used to clamp the tire to the wheel (figs. 4 & 8, ¶ [0008], [0028]-[0029] & [0036]).
Claims 27-38 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2018/0104985 (“Buck”) in view of Lowe and FR873.
Regarding claim 27, Buck teaches a combination for attaching a tire to a wheel (Title, ¶ [0001]), the combination consisting of: a wheel (14 & 28) (fig. 2, ¶ [0009] & [0012], wherein element 28 may be integral with element 14 or welded thereto) having an outside surface defining an outer lip (fig. 4, i.e. outer edge/rim of element 28) and a [bolt] hole (38) (fig. 2, ¶ [0012]), the outer lip disposed about an outer edge of the wheel and configured to receive a tire bead of the tire thereon (fig. 4), the [bolt] hole positioned radially inward from the outer lip (figs. 2 & 4); a bead ring (30) having a clamping portion (section 58 of ribs 44 or convex surface above section 58) (figs. 3-4), the bead ring defining a pilot hole (48) radially inward of the clamping portion (fig. 3, wherein holes 48 are radially inward from at least one of portion 58 or the convex surface thereabove); and a bolt (72) disposed through the pilot hole to secure the bead ring to the wheel (figs. 2 & 4-5, ¶ [0020]).
Claim 27 also recites a fulcrum extending from the bead ring or the wheel, the fulcrum integrally formed with the bead ring or the wheel; the fulcrum engaging the bead ring or the wheel such that the bead ring pivots about the bolt along a single major axis defined by the bolt when the clamping portion of the bead ring clamps the tire bead in the outer lip of the wheel to retain the tire to the wheel. The edge 66 of ledge 56 of Buck can contact lower portion of wheel 28 such that the bead ring is rotated about the edge 66 of ledge 56 (figs. 3 & 4 of Buck). Due to the bolts of Buck et al. applying an inward force to a radially inner end of the bead ring, and, the tire bead applying an outward force to a radially outer end of the tire bead (see fig. 4 of Buck), the ledge 56 of the bead ring is capable of contacting the wheel before the bead ring is fully tightened such that the bead ring pivots about the fulcrum to further clamp the tire bead (this is also admitted to in para. [0007] of Applicant’s originally filed specification). As such, ledge 56 can be interpreted as the fulcrum.
Buck fails to explicitly teach the bead ring defining an elongated pilot hole and a bead ring ball seat radially inward of the clamping portion, the bead ring ball seat disposed about the elongated pilot hole, and the bolt comprising a bolt ball seat having a profile that pivotally engages the bead ring ball seat of the bead ring. However, this would have been obvious in view of Lowe and FR873.
Lowe is also directed to fastening a component 14/15 of a wheel with a bolt 17, wherein the component is configured to tilt around the bolt at a fulcrum point 16 (fig. 1, page 2 lines 14- 36 & 68-89). The component configured to tilt with respect to the bolt has a spherical/ball seat 25 configured to seat a spherical/ball portion 19 of the fastener, and, an elongated pilot hole 24 wherein the ball portion 19 is nestled at least partially within the ball seat 25 and elongated hole 24 (figs. 1 & 3, page 2 lines 62-78).
While Lowe teaches the spherical ball seat of the fastener being on a washer, FR873 teaches that it is known to form a ball and socket joint with the ball seat located below the head of the bolt (figs. 5-6, lines 60-63). FR873 is also directed to attaching a tire f to a wheel (figs. 5 & 6, lines 13-15).
In this case, each of Buck, Lowe, and FR873 are directed to fastening parts of a wheel with a bolt wherein a component to be fastened is configured to tilt with respect to the bolt during installation. Lowe teaches a known structure between the bolt and the tilting component so that undue stress is not put on the bolt, wherein the structure comprises a spherical seat configured to receive a corresponding spherical portion of the fastener, and an elongated hole of the component receives the bolt shaft. FR873 further teaches that it is predictable to form a ball socket joint by providing the ball seat on the bottom of the head of the bolt, i.e. with no washer between the bead ring seat and head of the bolt. Lowe teaches one of skill in the art that the combination of the elongated hole and the ball and socket joint will better allow the component to tilt with respect to the bolt without putting undue stress on the bolt. Thus, it would be obvious to modify Buck so that the bolt comprises a bolt ball seat below the head configured to mate within a corresponding ball seat of the bead ring disposed about the pilot hole, and, the shaft of the bolt being within an elongated pilot hole of the bead ring.
Buck fails to explicitly teach the bolt hole of the wheel being a threaded hole to threadably engage with the bolt. However, the examiner is taking Official Notice that it is well known for bolt holes to have internal threads therein to engage the threads of bolts, or for nuts to be welded/attached adjacent to bolt holes. FR873 also teaches bolts can be screwed into threaded holes of the wheel (see figs. 5-6). Thus, it would be obvious to modify Buck so that the bolt holes of the wheels have an internal thread to engage the thread of the bolts. This will predictably allow a bolt to be more easily fastened to the wheel with respect to having to hold a nut on the inside of the wheel.
Since the preamble of claim 27 ends with “consisting of”, no other element can be present that helps to secure the tire to the wheel. As taught by Buck et al., the only elements needed that help secure the tire to the wheel are the wheel, bead ring, and bolts. The examiner is taking Official Notice that it is well known to sell components individually or together with other needed parts. Thus, it would be obvious to sell/provide a kit/combination that comprises only one bolt.
Claim 28 recites the bolt has a hexagonal head. Buck teaches the head to have a polygonal shape with a plurality of sides (fig. 2), but it is unclear how many sides the head has. The examiner is taking Official Notice that it is well known for bolt heads to have a hexagonal shape. Thus, it would be obvious to modify the bolt head of Buck so that it is hexagonal.
Claim 29 recites the bolt has a thread diameter. One of skill in the art appreciates that the thread of the bolt of Buck has a diameter. Buck fails to explicitly teach the thread diameter is selected from the group consisting of 1/4 inch, 3/8 inch, and 5/16 inch. However, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In this case, one of skill in the art having ordinary creativity would appreciate that the size of the bolts and threads can vary and still perform as intended. Applicant’s also acknowledge this as paragraphs [0002] & [0047]-[0048] of Applicant’s originally filed specification state the threads can have any diameter and density of threads per inch. Thus, this limitation does not appear to be critical or produce unexpected results. Therefore, this limitation does not patentably distinguish over Buck et al.
Claim 30 recites the bolt has a thread density. One of skill in the art appreciates that the thread of the bolt of Buck has a thread density. Buck fails to explicitly teach the thread density is in a range of 16 and 24 threads per inch. However, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In this case, one of skill in the art having ordinary creativity would appreciate that the density of the threads can vary and still perform as intended. Applicant’s also acknowledge this as paragraphs [0002] & [0047]-[0048] of Applicant’s originally filed specification state the threads can have any diameter and density of threads per inch. Thus, this limitation does not appear to be critical or produce unexpected results. Therefore, this limitation does not patentably distinguish over Buck et al.
Claim 31 recites the bolt defines a bolt axis that is orthogonal to the outside surface of the wheel, the bead ring configured to about the bolt without deflecting the bolt axis from orthogonal to the outside surface of the wheel. As illustrated in figs. 2 & 4 of Buck, the bolt axis is orthogonal to the outside surface of the wheel. As detailed in the rejection to claim 27 above, due to the elongated pilot hole, the bead ring is capable of pivoting around the bolt without deflecting the bolt axis.
Regarding claim 32, Buck further teaches the fulcrum (56) extends from the bead ring, the fulcrum positioned opposite the clamping portion with the elongated pilot hole and the bead ring ball seat located between the clamping portion and the fulcrum (figs. 3-4), the fulcrum engaging the outside surface of the wheel when bead ring clamps the tire bead (fig. 4).
Claim 33 recites the fulcrum extends outwardly from the outside surface of the wheel, the fulcrum positioned radially inward from the outer lip with the threaded hole positioned between the outer lip and the fulcrum, the fulcrum engaging a fulcrum engaging portion of the bead ring positioned opposite the clamping portion with the elongated pilot hole and the bead ring ball seat located therebetween, the fulcrum engaging the fulcrum engaging portion of the bead ring when the bead ring clamps the tire bead. It would be obvious and predictable to provide the ledge 56 extending from the outside surface of the wheel because Buck teaches the rib elements 44, and thus ledge 56, may be formed on portion 28 of the wheel instead of the bead ring (¶ [0021]).
The examiner notes that given this modification (wherein the clamping surfaces of the bead ring and wheel are reversed), the lip of the wheel is interpreted as the upper curved surface above section 58 of the ribs 44 that is capable of receiving a tire bead thereon (see fig. 4 of Buck). The threaded holes will be between the fulcrum 56 and the lip (see figs. 3-4). Further, the fulcrum will engage a radially inner surface of the bead ring, i.e. fulcrum engaging surface, that is opposite the outer clamping portion and wherein the pilot holes and ball seats are therebetween (see figs. 3-4 of Buck).
All the limitations of claim 34 and 36 are required by claim 27. Buck in view of Lowe and FR873 teach these limitations as detailed in the rejection to claim 27 above. The preamble of claim 34 also ends with “consisting of”—thus no other element can be present except for the bead ring and the bolt. The examiner is taking Official Notice that it is well known to sell components individually or together with other needed parts such as fasteners. Thus, since a bolt is needed to secure the bead ring, it would be obvious to sell a kit that comprises the bead ring and a bolt.
Regarding claims 35 and 37, Buck et al. further teaches the bead ring includes a fulcrum (56) extending therefrom, the fulcrum positioned opposite the clamping portion with the elongated pilot hole and the bead ring ball seat located therebetween (figs. 3-4 of Buck, wherein the pilot hole and ball seat are between the fulcrum 56 an the radially outer convex clamping surface).
Claim 38 recites a system comprising: a wheel; a tire; and a bead ring assembly according to claim 36 secured to the wheel and clamping the tire to the wheel. Buck in view of Lowe and FR873 teach the limitations of claim 36 as detailed in the above rejections to claims 27 and 36. Buck further teaches a wheel (14) and a tire (12), wherein the bead ring is used to clamp the tire to the wheel (figs. 1-5, ¶ [0009]-[0012]).
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 27, 21, 34, 36, and 38 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 11,780,274 (“the ‘274 patent”) in view of Rider. Claim 2 of the ‘274 patent teaches or suggests all the limitations of claims 34 and 36 except for the bead ring seat being a ball seat that is radially inward from the clamping portion (claim 2 of the ‘274 patent requires a portion of the tire to be clamped between the bead ring and wheel, thus requiring the bead ring to have a clamping portion). However, this would be obvious in view of Rider. Rider teaches clamping a tire between a bead ring and a wheel, wherein the bead ring has a ball seat to allow a ball seat of a fastener to sit therein, and wherein the ball seat of the bead ring is inward from the clamping portion 153. Thus, it would be obvious to modify the bead ring seat of the ‘274 patent so that it is a ball seat, and wherein it is inward from the clamping portion of the bead ring. Rider teaches these modification can help better secure a tire to a wheel, among other advantages (see ¶ [0008] of Rider).
With respect to claim 34, the preamble ends with “consisting of”—thus no other element can be present except for the bead ring and the bolt. The examiner is taking Official Notice that it is well known to sell components individually or together with other needed parts such as fasteners. Thus, since a bolt is needed to secure the bead ring of the ‘274 patent, it would be obvious to sell/provide a kit that comprises the bead ring and a bolt.
Claim 38 recites the bead ring assembly of claim 36, along with a wheel and a tire, wherein the bead ring assembly is secured to the wheel and clamping the tire to the wheel. Claim 2 (which includes the limitations of claim 1) of the ‘274 patent requires a wheel. In addition, the combination of claim 2 is configured to clamp a tire between the bead ring and wheel by securing the bead ring to the wheel via bolts. Thus, it is obvious to use the combination of claim 2 of the ‘274 patent for what it was designed to do—i.e. clamp a tire between the bead ring and wheel by securing the bead ring to the wheel via bolts.
As detailed in the above rejections, claim 2 of the ‘274 patent in view of Rider teach all the limitations of claim 27 that are also in claims 34 and 36. Claim 2 of the ‘274 patent also teaches the rest of the limitations of claim 27 except for the below limitations.
Claim 2 of the ‘274 patent fails to teach the wheel having an outside surface defining an outer lip, the outer lip disposed about an outer edge of the wheel and configured to receive a tire bead of the tire therein, the threaded hole positioned radially inward from the outer lip. Rider teaches providing an outer surface of the wheel with outer lip 111 at an outer edge of the wheel to help better secure a tire therein/thereon, and wherein the threaded hole is radially inward from the outer lip (fig. 8, ¶ [0003]-[0008] & [0034]). Thus, to better secure a tire, it would be obvious to modify claim 2 of the ‘274 reference so that an outer lip is provided at an outer edge of an outer surface the wheel (outward from the threaded hole) that is configured to receive/clamp a tire bead of a tire.
While claim 2 of the ‘274 patent recites a fulcrum on the wheel, claim 2 of the ‘274 patent fails to explicitly teach the fulcrum integrally formed with the wheel. However, this is an obvious engineering choice (see MPEP 2144.04(V)(B)).
Regarding claim 31, it would be obvious to make the bolt axis of claim 2 of the ‘274 patent orthogonal to the outside surface of the wheel in view of figure 8 of Rider since this configuration will allow the bolts to optimally clamp the tire without putting undue stress on the bolts. Further, due to the elongated pilot hole, the bead ring is capable of pivoting without deflecting the bolt axis.
Claim 28 is rejected over claim 3 of the ‘274 patent in view of Rider (wherein claim 3 is modified in view of Rider for the same reasons detailed in the rejection to claim 27 above).
Claims 29 and 30 are rejected over claim 11 of the ‘274 patent in view of Rider (wherein claim 11 is modified in view of Rider for the same reasons detailed in the rejection to claim 27 above).
Response to Arguments
Applicant's arguments filed December 12, 2025 (“the remarks”) have been fully considered. The examiner acknowledges that all the previous claims have been cancelled. Thus, the previous prior art rejections have been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”