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 Invention I claims 1-10 and Species I FIGS. 1-6 in the reply filed on 9/2/25 is acknowledged.
Claim Rejections - 35 USC § 112
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 4-5 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.
With Respect to Claims 4-5
These claims recite that the rod receiver is “oriented” and “configured” to extend/lie in a certain relative position. However, it is unclear whether this is a structural limitation that structurally requires the vehicle body, or if it is merely a functional limitation further defining the functionality of the device. It is noted that “configured” is a term of art indicating functionality.
For the purposes of Examination on the merits, Examiner takes the broadest reasonable interpretation of the unclear and indefinite claim language to be that these limitations are merely functional.
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.
Claims 1-5, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent #3,617,284 to Lynch (Lynch) in view of U.S. Patent #12,302,882 to Erdmann.
With Respect to Claim 1
Lynch discloses a fishing rod holder apparatus comprising: a bracket comprising a vehicle mount portion (34), a rod mount portion (28, alone or in combination with 40 and/or 26), and an intermediate portion (32, alone or in combination with 30), the intermediate portion being coupled to and extending between the vehicle mount portion and the rod mount portion (FIG. 2), the rod mount portion being spaced laterally with respect to the vehicle mount portion from the vehicle mount portion (FIG. 2), a top edge of the rod mount portion being spaced upwardly from the vehicle mount portion (noting top edge of 28), the vehicle mount portion being configured to mount to a vehicle body (capable of this use which is also the intended use, noting the bicycle is a vehicle); and a rod receiver (16) coupled to the rod mount portion of the bracket adjacent to the top edge (FIG. 2), the rod receiver having a tube shape and being elongated between a first end and a second end, the rod receiver being open at the first end (FIGS. 1-4 and description), the rod receiver being sized and configured to receive a handle of a fishing rod through the first end (capable of this use which is also the intended use), and shaping the top section so as to hold a rod having a reel in an appropriate position (noting angled top opening disclosed as positioning reel to prevent interference with the bike); but does not disclose wherein the rod receiver defines a pair of slots which extends from the first end toward the second end, each slot being open at the first end and terminating at a respective closed end, each slot being in communication with an interior of the rod receiver, each slot being sized and configured to accommodate a reel mount of the fishing rod, said pair of slots being positioned diametrically opposed from each other.
However, Erdmann discloses forming a fishing rod holder attachable to any suitable structure including vehicles, the holder including a rod receiver (110) that defines a pair of slots which extends from the first end toward the second end, each slot being open at the first end and terminating at a respective closed end, each slot being in communication with an interior of the rod receiver, each slot being sized and configured to accommodate a reel mount of the fishing rod, said pair of slots being positioned diametrically opposed from each other (FIGS, 4, 10, 12, 16A/B, and others show the slots being diametrically opposed and the or substantially the same size, and FIG. 2 shows a fishing rod with reel mount accommodated in one of the slots which indicates that both slots are capable of this use).
It would have been obvious to one of ordinary skill in the art before the filing date of this application, given the disclosure of Erdmann, to form the rod holder of Lynch with a pair of diametrically opposed slots, in order to better secure the reel in position and/or as a mere substitution of one art known rod holding structure for another. For clarity, the combination encompasses either having one slot on the side facing the bike and the other on the opposite side so as to hold the reel in the same position as Lynch with the benefit of the second slot being reduced weight/cost and/or allowing for accommodating other structures that might be opposite the reel mount, or alternately having one slot facing forward and other facing rearward to allow for the user to select the reel facing frontwardly or rearwardly as doing so constitutes at most a mere rearrangement of parts which does not patentably distinguish over the prior art (MPEP 2144.04) or merely making adjustable (i.e. it merely allows for adjustment of the location of the reel mount and/or orientation of the rod in the receiver) which does not patentably distinguish over the prior art (MPEP 2144.04).
Alternately, although Examiner maintains that it would be obvious to use other orientations instead of that taught by Lynch, it would have been obvious to include at least three slots (i.e. a pair of diametrically opposed slots facing forwardly and rearwardly and one facing to the side of the bike to accommodate the orientation used by Lynch) as doing so constitutes at most a mere duplication of parts which does not patentably distinguish over the prior art (MPEP 2144.04) and/or merely making adjustable which does not patentably distinguish over the prior art (MPEP 2144.04).
With Respect to Claim 2
The apparatus of claim 1, wherein each of the vehicle mount portion, the rod mount portion, and the intermediate portion has a substantially planar shape (FIGS. 2, 4, and description).
With Respect to Claim 3
The apparatus of claim 1, wherein the vehicle mount portion defines a mounting hole (slot 36) configured to facilitate mounting the bracket to the vehicle body via a threaded fastener (capable of this use which is also the intended uses, noting 38, 50, FIG. 2).
With Respect to Claim 4
The apparatus of claim 1, wherein the rod receiver is oriented to extend upwardly and rearwardly with respect to the bracket from the second end to the first end (capable of this use, noting upwardly angled orientation in FIG. 1, although it is not clear whether the wheel 10 is the front or rear wheel, it is Examiner’s position that the structure is capable of being mounted so as to extend upwardly and rearwardly via mounting to the front wheel at the angle shown rearwardly or to any other suitable surface in an upward and rearward orientation e.g. a wall for storage).
With Respect to Claim 7
The apparatus of claim 1, wherein the intermediate portion of the bracket extends upwardly and laterally away from the vehicle mount portion with respect to the vehicle mount portion, the rod mount portion extending upwardly from the intermediate portion with respect to the vehicle mount portion, each of the vehicle mount portion, the rod mount portion, and the intermediate portion having substantially planar shapes, the vehicle mount portion lying on a vehicle mount plane, the intermediate portion lying on an intermediate plane, the rod mount portion lying on a rod mount plane (see e.g. FIGS 2-4 and description).
With Respect to Claim 9
The apparatus of claim 7, wherein the intermediate portion defines an opening (noting opening between 30 and 32) sized and configured to permit a hood closure of the vehicle body to extend therethrough (capable of this use with an appropriate vehicle having an appropriate hood closure).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Lynch in view of Erdmann as applied to claim 1 above, either alone or further in view of U.S. Patent #10,210,780 to Williams (Williams).
With Respect to Claim 8
The apparatus of claim 7, but does not detail a particular angle of the parts other than the purely exemplary substantially parallel orientation shown in the drawings which results in the same acute angle between the vehicle mount plane and intermediate plane as between the rod mount plane and the intermediate plane, and so does not disclose wherein an acute angle between the vehicle mount plane and the intermediate plane is greater than an acute angle between the rod mount plane and the intermediate plane.
However, it would have been obvious to one of ordinary skill in the art before the filing date of this application to adjust the rod mount plane outwardly so as to angle the rod holder outwardly away from the bicycle in order to provide greater clearance and avoid potential interference with the rider or other items attached to the bicycle, and/or as doing so constitutes at most a mere change in shape or a mere change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04). It is Examiner’s position that angling the rod mount plane outwardly results in the acute angle between the vehicle mount plane and the intermediate plane is greater than an acute angle between the rod mount plane and the intermediate plane.
Alternately, Williams discloses forming a similar cycle attached tubular holder for an elongated object so as to be angled away from the cycle in order to avoid interfering with cycle components such as luggage carriers/saddlebags, which provides additional evidence of the obviousness of and/or motivation to modify the Lynch structure in this fashion.
Response to Arguments
Applicant’s arguments filed 1/2/26 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
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 at (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.
/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734