Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Interpretation
2. Applicant has added the limitation “a rounded peak configured to provide aerodynamic efficiency”’ to claim 1 and “a rounded peak to enhance aerodynamic performance” in claim 16. Such efficiency is discussed in paragraph [0012] of Applicant’s specification. As disclosed, it seems such efficiency is just the inherent result of the tapered shape. This makes sense as a tapered or rounded shape would certainly be more aerodynamic than a square shape. These limitations are being interpreted as such, i.e. a rounded peak is inherently more aerodynamically efficient than a square shape. In other words, the limitation does not really add any additional structure to the already claimed “rounded peak”, as a rounded peak/end is already inherently more aerodynamic than a square end.
3. In claim 1, “a common through-hole sized to receive a bolt and nut” is being interpreted as the hole being sized to receive the bolt only, where a nut can be attached to the bolt after the bolt is received in the through-hole. In other words, the through-hole is not sized to receive the nut. This seems to be in line with the originally filed disclosure.
Claim Rejections - 35 USC § 103
4. 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.
5. 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.
6. Claims 1, 2, 4, 6-8, 10, 11, 13, 14, 16-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Fenton (US 5,356,058 A) in view of Chee (US 10,604,204 B2), Overall (US 2015/0003907 A1), Retief (US 2010/0264184 A1), and Thomas (US 5,024,359 A).
Regarding claims 1, 7, 14, 16, 17, and 20, Fenton discloses a hard shell saddle bag, comprising: a rigid (see “rigid polymeric material” in col. 2 line 26) monolithic (see “blow-molding” in col. 2 line 53 and Figures) receptacle (10) including a side wall (between 10a and 10b) and a base wall (10a), the side wall disposed on the base wall such that the side wall and the base wall define a cavity having an opening (12) distal to the base wall, wherein the side wall is defined in part by a cross-section that is substantially rectangular having rounded corners (see Figure 5), wherein the base wall is defined by a substantially extended pyramidal shape having a rounded peak configured to provide aerodynamic efficiency (see Figures 1-3, 6, and 7); a lid (14) integrated (via 44) to the side wall distal to the base wall, the lid configured to cover the opening when in a closed position, thereby enclosing the cavity (see Figures); and a mount point (16) attached to the side wall for mechanical connection with the bicycle; wherein the cavity is defined by the base wall and the side wall and configured to be enclosed by the lid such that a bicycle repair tool may be disposed therein (tool not currently being claimed in combination due to the functional “may be disposed” language).
Fenton fails to disclose wherein the side wall is further defined by an action mount configured for mounting of an accessory thereto; the mount point being integral with the side wall; and the mount point comprising one or more mounting tabs, each tab monolithic with the side wall and defined by a common through hole sized to receive a bolt and nut for mechanical connection to a mating tab of a bicycle (bolt and nut not currently being claimed in combination).
Regarding the side wall being further defined by an action mount, Chee teaches that it was already known in the art to provide a saddle bag with an action mount (40) that allows a user to mount a GoPro camera thereto. Chee discloses the action mount being detachable and not integral with the saddle bag. Overall teaches that it was already known in the art to mold a GoPro action mount (106) in one piece with the article upon which the user is to mount the camera (see “molded as a single piece” in [0025]). Considering these references in their entirety, it would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided an action mount on the Fenton saddlebag, the motivation being to allow a user to attach a GoPro camera, as taught by Chee, and to have molded the action mount with the sidewall, where such construction technique was already known in the art, as taught by Overall.
Regarding the mount point being integral with the side wall and the mount point comprising a mounting tab, each tab monolithic with the side wall and defined by a common through hole, wherein the common through hole is sized such that a mating tab of a bicycle may be aligned therewith and the mounting tab and the mating tab may be mechanically joined via a bolt and nut, Retief teaches that it was already known in the art to mount an accessory to a bicycle seat using a mount point being integral with an accessory (3) and comprising a mounting tab (33), each tab defined by a common through hole, wherein the common through hole is sized such that a mating tab of a bicycle may be aligned therewith and the mounting tab and the mating tab may be mechanically joined via a bolt and nut (26 and 27, even though none of the bicycle mating tab, nut, nor bolt are currently being claimed in combination due to the functional “maybe” language). Thomas shows another example of it being known to have a tab-style mount point (29,29) being integrally formed (see “molded integral” in col. 2 lines 12-21) with a bicycle accessory receptacle. Considering these references in their entirety, it would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have replaced the mount point design of the Fenton saddlebag and an integrally formed mount point comprising a tab design, as collectively taught by Retief and Thomas, as a simple substitution of one known mount design for another known mount design. There is no inventive step in simply choosing between known mount designs absent a showing of unexpected results.
Regarding claims 2, 8, and 10, Fenton as modified above includes the hard shell saddle bag of claims 1 and 7, wherein the accessory is a video camera or a lighting accessory. The accessory is still not being claimed in combination but Chee discloses the mount being used to attach a GoPro or a light (see col. 3 lines 65+).
Regarding claims 4, 11, and 18, Fenton as modified above includes the hard shell saddle bag of claims 1, 7, and 16, wherein the side wall is tapered such that the cross-section of the side wall increases in enclosed area as a distance from the base wall increases, as originally taught by Fenton (see Figures).
Regarding claims 6 and 13, Fenton as modified above includes the hard shell saddle bag of claims 1 and 7, but Fenton never explicitly discloses wherein the rounded peak of the substantially extended pyramidal shape is configured to maximize aerodynamic efficiency when impinged with air traveling at 20 miles per hour, although this might be exactly the case of the shape shown by Fenton. Applicant has not disclosed any specifics as to the configuration of the peak that optimizes the aerodynamics. Applicant mentions the peak in paragraph [0013] and very generally discusses aerodynamics related to air speed in paragraph [0012] but with respect to the tapering of the side wall, not the shape of the peak. Any person of ordinary skill in the art would have understood through their own available knowledge and reasoning that anything related to a bicycle, including the modified Fenton saddle bag, can and probably should be optimized for maximum aerodynamics in order to improve the comfort of the bicycle rider and make it easier for them to ride on a windy day. In this case, the curvature of the rounded peak of the Fenton receptacle is a results effective variable with the results being aerodynamic efficiency. It would have been obvious to one having ordinary skill in the art at the time the invention was made to have optimized the roundness of the peak in order to maximize aerodynamic efficiency, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
7. Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fenton (US 5,356,058 A) in view of Chee (US 10,604,204 B2), Overall (US 2015/0003907 A1), Retief (US 2010/0264184 A1), and Thomas (US 5,024,359 A) as applied above, further in view of Szasz (US 12,128,981 B2).
Regarding claim 3, Fenton as modified above includes the hard shell saddle bag of claim 1, but so far fails to include wherein the rigid monolithic receptacle comprises carbon fiber, plastic, or a composite material. Fenton only broadly discloses the receptacle being made of “polymeric” material. Szasz teaches that it was already known in the art for either of carbon fiber or plastic to be suitable for making a receptacle like that of Fenton (see col. 2 lines 56-57). It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have made the modified Fenton receptacle out of either carbon fiber or plastic, where Szasz teaches that both materials are suitable for such use. It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
8. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Fenton (US 5,356,058 A) in view of Chee (US 10,604,204 B2), Overall (US 2015/0003907 A1), Retief (US 2010/0264184 A1), and Thomas (US 5,024,359 A) as applied above, further in view of Maltese (US 10,331,020 B2).
Regarding claim 9, Fenton as modified above includes the hard shell saddle bag of claim 7, but Chee, who teaches the action mount that has been added to Fenton, fails to specifically disclose wherein the action mount comprises a threaded connection. Maltese teaches that it was already known in the art for a GoPro mount like that of Chee to include a threaded connection (38) to fix the angle of the mounting. It would have been obvious to one having ordinary skill in the art at the time Applicant’s invention was effectively filed to have provided the action mount of the modified Fenton saddle bag with a threaded connection, the motivation being to allow a user to fix the angle of the accessory mounted thereto, as taught by Maltese.
Response to Arguments
9. Applicant’s arguments filed 9/12/25 with respect to the 103 rejections based on Fenton have been fully considered but are not persuasive. Applicant has attacked the Fenton reference by itself and has not actually addressed the combination of references found in the rejections. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
10. 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN MATTHEW LARSON whose telephone number is (571)272-8649. The examiner can normally be reached Monday-Friday, 7am-3pm. 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, Nathan Newhouse can be reached on (571)272-4544. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JUSTIN M LARSON/Primary Examiner, Art Unit 3734 11/13/25