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 .
Election/Restrictions
Applicant's election with traverse of species a (run-flat insert for a bicycle wheel) in the reply filed on August 1, 2025 is acknowledged. The traversal is on the ground(s) that the added statement of intended use on a two-wheeled vehicle renders moot the species election requirement. This is not found persuasive because mere statement of intended use does not further limit the structure of the claimed invention in claims 1-14 and even in claim 15 merely reciting a two-wheeled vehicle does not place any limitation on the structure of the wheel, and the functional capability of the insert as a run-flat insert, bead spreader, or noise damper that does further limit structure depending upon the the particular wheel was clearly demonstrated to require different searches in the species election requirement contrary to applicant’s arguments.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The amendment filed June 20, 2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the added benefit statement including incorporations by reference and claiming benefit to itself (this application is the national stage of the international application) constitutes new matter because it was filed subsequent to the filing date of this application which is the international filing date (MPEP 608.01(p)(I)(B) last paragraph).
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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) 1-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent Application Publication 2018/0244106 A1 cited by applicant and/or European Patent Application 0 441 552 A2 cited by applicant and/or Published PCT Application WO 00/43224 A1 cited by applicant.
See the Written Opinion of the International Searching Authority filed in this application June 20, 2023.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adrienne C. Johnstone whose telephone number is (571)272-1218. The examiner can normally be reached M-F 1PM-5PM.
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ADRIENNE C. JOHNSTONE
Primary Examiner
Art Unit 1749
Adrienne Johnstone /ADRIENNE C. JOHNSTONE/ Primary Examiner, Art Unit 1749 September 30, 2025