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 without traverse of Group I, claims 1-18 in the reply filed on 16 December 2025 is acknowledged.
Claims 19-31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Drawings
The drawings are objected to because of the following informalities:
Figures 1 and 2 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 32 (Fig. 1), 34 (Fig. 1), 49 (Fig. 1), 59 (Fig. 1), 32 (Fig. 2), 33 (Fig. 2), 74 (Fig. 2) and 89 (Fig. 2).
The two different views of Fig. 1 should be labeled as distinct views to comply with 37 CFR 1.84(u)(1).
The two different drawings of Fig. 2 should be labeled as distinct drawings to comply with 37 CFR 1.84(u)(1).
The lead line for reference character 24 in Fig. 5 does not appear to be directed to the base portion as described.
Figs. 5-7 do not comply with 37 CFR 1.84(p)(3) because it includes text that does not measure at least .32 cm (1/8 inch) in height.
Fig. 11 is objected to because poor line quality has reduced the legibility of the legend and for not complying with 37 CFR 1.84(p)(3) because it includes text that does not measure at least .32 cm (1/8 inch) in height.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in pages 10 and 11 of the description: 5, D, A and R.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “inner circumferential portion contacts an axle of the wheel” as set forth in claim 18 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Each distinct part, including modified parts, should be labeled with a distinct reference character to be in compliance with 37 CFR 1.84(p). Note at least the following informalities:
The parts represented by reference characters 2, 4, 6, 10 and 12 in the second drawing of Fig. 1 are distinct (i.e., modified) from parts represented by these same reference characters in at least the first drawing of Fig. 1.
The parts represented by reference characters 4, 6, 8, 10, 12 and 32 in the first drawing of Fig. 2 are distinct (i.e., modified) from parts represented by these same reference characters in at least the two drawings of Fig. 1.
The parts represented by reference characters 2, 6, 8, 10 and 12 in the second drawing of Fig. 2 are distinct (i.e., modified) from parts represented by these same reference characters in at least the two drawings of Fig. 1.
The parts represented by reference characters 2, 4, 6 and 12 in Fig. 3 are distinct (i.e., modified) from parts represented by these same reference characters in at least the two drawings of Fig. 1.
The parts represented by reference characters 2, 4, 6 and 12 in Fig. 4 are distinct (i.e., modified) from parts represented by these same reference characters in at least the two drawings of Fig. 1.
The parts represented by reference characters 2, 4, 6 and 12 in Fig. 5 are distinct (i.e., modified) from parts represented by these same reference characters in at least the two drawings of Fig. 1.
The parts represented by reference characters 2, 10 and 12 in Fig. 8 are distinct (i.e., modified) from parts represented by these same reference characters in at least the two drawings of Fig. 1.
The parts represented by reference characters 2, 10 and 12 in Fig. 9 are distinct (i.e., modified) from parts represented by these same reference characters in at least the two drawings of Fig. 1.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 2-18 are objected to because of the following informalities: The phrase “A bicycle wheel” in the preamble of each of these claims should be replaced with -- The bicycle wheel -- for clarity inasmuch as “A bicycle wheel” is previously set forth in independent claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112
5. The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Claim 18 is 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 18, the specification fails to adequately explain how “the inner circumferential portion contacts an axle of the wheel” in such a way as to reasonably convey to one skilled in the relevant art that the inventor, at the time the application was filed, had possession of the claimed invention. Further, the drawings fail to show such a construction.
7. The following is a quotation of 35 U.S.C. 112(b):
(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 5, 13, 14 and 18 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 5, the both occurrences of term "preferably" render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention.
Regarding claim 13, the limitation “a number N of pockets” renders the claim indefinite because it is unclear whether “a number N of pockets” refers to “a plurality of pockets” previously recited in claim 1 or if it is distinct therefrom as implied by the claim construction.
Regarding claim 14, the limitation “a plurality of pockets” renders the claim indefinite because it is unclear whether “a plurality of pockets” refers to “a plurality of pockets” previously recited in claim 1 or if it is distinct therefrom as implied by the claim construction.
Regarding claim 18, the limitation “the inner circumferential portion contacts an axle of the wheel” renders the claim indefinite because it is unclear how the inner circumferential portion would be capable of contacting an axle of the wheel and still allow the wheel to rotate with respect to the axle (e.g., is the bicycle axle rotating during use of the wheel?).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-9 and 11-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Marchment et al. (WO 2019/197828 A1; hereinafter “Marchment”).
Regarding claim 1, Marchment, in the embodiment shown in Fig. 13, discloses a bicycle wheel 150 comprising an annular rim 150a having an inner circumferential portion (unlabeled inner radial portion), an outer circumferential portion (unlabeled outer radial portion) and a pair of side portions (unlabeled portions between inner and outer circumferential portions in Fig. 13 with recesses 20; note the general annular rim structure shown in the embodiments of Figs. 5 and 6) that extend between the inner circumferential portion and the outer circumferential portion (Fig. 13), wherein each side portion comprises a primary surface (surface shown in Fig. 13) and a pocket 20 that is recessed below the primary surface (Fig. 13; line 24 of page 5 through line 23 of page 6; lines 18-23 of page 9; lines 13-18 of page 23).
Regarding claim 2, Marchment further discloses each pocket has an area S of at least 0.25cm2 (evident from Fig. 13 and line 27 of page 5 through line 2 of page 6 that the area of the pocket 20 can be at least 0.25cm2).
Regarding claim 3, Marchment further discloses each pocket has an area S of less than 50cm2 (evident from Fig. 13 and line 27 of page 5 through line 2 of page 6 that the area of the pocket 20 can be less than 50cm2).
Regarding claim 4, Marchment further discloses each pocket has a recess depth R greater than 0.1mm (lines 31-34 of page 5).
Regarding claim 5, Marchment further discloses each pocket has a recess depth R less than 4mm, preferably less than 2mm, preferably less than 1mm (lines 31-34 of page 5).
Regarding claim 6, Marchment further discloses each pocket comprises a base portion (evident from Fig. 13, but best shown in Fig. 6 at 22) and at least one side wall (evident from Fig. 13, but best shown in Fig. 6 at 21a and 21b) that extends between the base portion and the primary surface (Figs. 6 and 13).
Regarding claim 7, Marchment further discloses the at least one side wall is inclined relative to the primary surface at an angle in the range 5-30 degrees (best shown in Fig. 6).
Regarding claim 8, Marchment further discloses the pockets extend substantially radially (Fig. 13).
Regarding claim 9, Marchment further discloses each pocket includes a base portion (evident from Fig. 13, but best shown in Fig. 6 at 22) and a pair of side walls (evident from Fig. 13, but best shown in Fig. 6 at 21a and 21b) that extend between the base portion and the primary surface, wherein each side wall extends at an angle A relative to a radial direction, where the angle A is in the range 0-30 degrees (best shown in Fig. 6).
Regarding claim 11, Marchment further discloses each of the pockets extends across the inner circumferential portion (inasmuch as the inner circumferential portion can be considered to be a portion that includes a radially inner portion of each recess shown in Fig. 13) and then extends outwards across the side portions of the rim (evident from Fig. 13).
Regarding claim 12, Marchment further discloses the rim has a rim depth D measured radially between the inner circumferential portion and the outer circumferential portion, and each pocket extends radially for a pocket radial distance P, where P has a value of at least 0.4D (evident from at least Fig. 13).
Regarding claim 13, Marchment further discloses each side portion includes a number N of pockets 20 spaced circumferentially around the rim, where the number N is in the range 8-50 (Fig. 13).
Regarding claim 14, Marchment further discloses each side portion includes a plurality of pockets 20 spaced circumferentially around the rim, and wherein each pocket is spaced from an adjacent pocket by a spacing angle B in the range 7-45 degrees (Fig. 13).
Regarding claim 15, Marchment further discloses the rim has a rim depth D measured radially between the inner circumferential portion and the outer circumferential portion, wherein the rim depth D is in the range 30-200mm (lines 19-20 of page 21).
Regarding claim 16, Marchment further discloses the rim has a cross-sectional profile that is substantially U shaped, or substantially V shaped, or U/V shaped (note at least Fig. 6).
Regarding claim 17, Marchment further discloses a hub 300 and a plurality of connecting elements 400 that connect to the annular rim to the hub (Fig. 2).
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.
Claims 10 is rejected under 35 U.S.C. 103 as being unpatentable over Marchment.
Although Marchment further discloses that the pocket “may in general have any cross sectional geometry” (line 1 of page 10), Marchment fails to expressly disclose a geometry in which the pair of side walls converge in a radially outward direction.
Nonetheless, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention, as a mere matter of design choice, to have formed the plurality of pockets with a pair of side walls that converge in a radially outward direction as a well-known cross-sectional geometry that would have a reasonable expectation of success for minimizing the weight of the rim. It is further noted that there is no evidence that this claimed shape it critical for the practice of Applicant’s invention (Note In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
Claims 18, as best understood in light of the section 112 issues noted above, is rejected under 35 U.S.C. 103 as being unpatentable over Marchment in view of Crawford (US 903,681).
Marchment fails to disclose the inner circumferential portion contacting an axle of the wheel, whereby the bicycle wheel comprises a solid disc.
Crawford, however, teaches an inner circumferential portion (radially inner portion of B) of the rim contacting an axle (lines 68-72 of page 1) of the wheel so as to form a solid disc B.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the wheel so that the inner circumferential portion contacts an axle to thus form a solid disc, such as taught by Crawford, as a well-known alternative type of bicycle wheel that would have a reasonable expectation of success in improving the aerodynamic properties of the wheel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The prior art shows other examples of bicycle wheels having a rim that includes a plurality of pockets.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIP T KOTTER whose telephone number is (571)272-7953. The examiner can normally be reached 9:30-6 EST Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joe) J Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kip T Kotter/Primary Examiner, Art Unit 3615