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 .
Response to Amendment
The amendment filed March 26th, 2026 has been entered. Amended claims 1-2, 4-15, and new claim 16 are pending in the application.
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, 5-6, and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by King et. al (hereinafter referred to as King – US 2022/0204118 A1).
Regarding Claim 1, King teaches a compression ring (“bearing” in the title denotes an annular shape, “compression ring” stated in Paragraph 0029) comprising;
an annular body (assembly of all elements identified and discussed below, also Figs. 3-4) comprising a through hole (Diagram 1 – annotated inset of Fig. 4, the annular body surrounding the annotated axis element A1), a large-diameter portion (“top cap 150”, Para 0029, Figs. 3-4), and a small-diameter portion (“compression ring 130”, Para 0029, Figs. 3-4), wherein the large-diameter portion and the small-diameter portion surround the through hole and are connected with each other (Figs. 3-4); the annular body has a cable-guiding hole (combination of apertures 136 and 156, Paras. 0032-0033, Figs. 3-4), passing through the large-diameter portion 150 and the small-diameter portion 130;
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Diagram 1 – Annotated inset of King – Fig. 4
wherein the annular body comprises a connecting portion (Fig 4, assembly of 152 and 140, or Diagram 2, A4 for assembled cross-sectional view) and an annular groove (Fig. 4 134 – “beveled surface”, also Diagram 2, A3); the connecting portion (A4) is located between the large-diameter portion (150) and the small-diameter portion (130) and is connected with the large-diameter portion and the small-diameter portion (Interface of 150, A4, 130); the annular groove (A3) surrounds an outside of the annular body and is located between the connecting portion and the large-diameter portion (spatial disposition of 150, A3, 130); and
wherein the compression ring further comprises a sealing gasket (Fig 5, 132 “retention element”, embodied as an O-ring) that fits around the annular groove for fixing; the sealing gasket has a fitting portion (Diagram 2, left side portion of 132) and an outer annular portion (right side portion of 132), wherein the fitting portion is correspondingly received in the annular groove (interface of left portion of 132 and A3); and the outer portion surrounds an outer periphery of the fitting portion (right side of 132 surrounds left side of 132) and tightly abuts against a bottom edge of the large-diameter portion (interface between right side of 132 and 150).
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Diagram 2 – Annotated inset of King – Fig. 5
Regarding Claim 5, King further teaches the compression ring as claimed in Claim 1 wherein the cable guiding hole (156 and 136) passes through a top side surface (Fig. 5, top side of 156) of the large-diameter portion and a bottom side surface (Fig. 5, bottom side of 136) of the small-diameter portion along an axial direction of the through-hole (Fig 5, alternatively Fig 6 for a generic cross-sectional view);
a first cable hole of the cable guiding hole is formed on the top side surface of the large-diameter portion (Fig. 5, top side of 156);
a second cable hole of the cable guiding hole is formed on the bottom side surface of the small-diameter portion (Fig 5, bottom side of 136);
an opening of the first cable hole is larger than an opening of the second cable hole (Paragraph 0034 – “…the aperture 136 is tapered, so that the aperture has a larger opening on the top surface of the compression ring 130 than an opening at the bottom surface.” Additional equivalent embodiment in Fig. 6, elements 240 and 230 demonstrate tapering, i.e., dimension 230 is smaller than dimension 240).
Regarding Claim 6, King further teaches that the annular body has a notch passing through an inner wall of the through hole (Fig. 6, detailed cross-sectional view of cable hole, right-angle element 219 and lower lip 218)
the first cable hole and the second cable hole communicate with the notch (220, space where tapered cable hole 236 communicates with inner annular hole denoted by axis 208.);
the notch is located between the cable guiding hole and the through hole (218/219 is located between cable guiding hole 236 and inner annular hole 208).
Regarding Claim 12, King further teaches a bicycle frame, comprising a head tube (Fig 3, 110) having an abutting portion (interface between 110 and 150);
the compression ring as claimed in Claim 1, wherein the compression ring is disposed on an end of the head tube (Fig 3, assembly of 130 and 150 interfacing with 110);
the annular body enters the head tube through the small-diameter portion (Figs 3 or 5, disposition of 130 relative to 110);
an outer diameter of the large-diameter portion (150) is larger than a diameter of the head tube (Fig 3, 150 surrounds the wide-diameter portion of the head tube 110 and the narrow-diameter portion of the head tube 120);
the large-diameter portion abuts against an end-opening of the head tube (Fig 5, interface of 150 and 110);
the cable guiding hole (136 and 156) communicates with the head tube;
and a bearing (114) disposed in the head tube, wherein the bearing surrounds the small-diameter portion of the annular body and abuts against the abutting portion (Fig 5).
Regarding Claim 13, King further teaches the head tube having a wide opening portion (Fig 3, 110) and a narrow portion (120);
the abutting portion is located between the wide opening portion and the narrow portion (Figs 3 or 5, disposition of 110, 130, 120);
the wide opening portion is located on the end of the head tube (Fig 3 or 5 for greater detail);
the narrow portion extends from the abutting portion along an axial direction of the head tube (Figs 3 or 5);
an outer peripheral edge of the bearing has an outer abutting surface (Fig 5, interface of 110 and 114);
the bearing is received in the wide opening portion and the outer abutting surface correspondingly abuts against the abutting portion (Fig 5, interface of 110 and 114).
Regarding Claim 14, King further teaches wherein:
an inner peripheral edge of the bearing has an inner abutting surface (Fig 5, interface of 114 and 130);
when the annular body is disposed on the head tube, the small-diameter portion and the connecting portion are received in the wide opening portion, the connecting portion correspondingly abuts against the inner abutting surface of the bearing (Fig 5, interface of 114 and 130);
a space is formed between a periphery of the small-diameter portion and an inner wall of the wide opening portion (alternatively see equivalent embodiment of Figs 7A or 7B for detail; also, see the encircled portion of Fig. 5 in Diagram 3 below.);
the bearing fits around the connecting portion and the periphery of the small-diameter portion and is fixed in the space (Fig 5, spatial disposition of 114 and 140).
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Diagram 3 – Annotated inset of King – Fig. 5
Regarding Claim 15, King already teaches when the annular body is disposed on the head tube (Fig. 3, 110), the outer annular portion (left side portion of 132) of the sealing gasket (132) abuts against the end opening of the head tube (Fig 5, contact interface of 132 and 150).
Claim Rejections - 35 USC §§ 102/103
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 7 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by King and further rejected under 35 U.S.C. 103 as being unpatentable over King.
Regarding Claim 7, King further teaches an annular body comprising a first annular base (Fig 4, 150) and a second annular base (130);
the first annular base has a first engaging end (bottom surface of 150);
and the second annular base has a second engaging end (top surface of 130), wherein the first engaging end and the second engaging end are correspondingly engaged with each other, allowing the first annular base and the second annular base to be detachably engaged with each other and to surround to form the through-hole (assembly of Fig. 4).
Therefore, King anticipates the claim.
Additionally, and in the alternative, if an argument may be made that King does not expressly teach separability upon a specific direction or upon a particular separation line/plane, it would have been obvious to one ordinarily skilled in the art to employ any well-known method to make the compression ring of King separable into two or more portions when desirable (generally, to facilitate easier assembly/disassembly from a bicycle frame or head set or to allow the annular body to further compress radially than may be possible as a monolithic part due to material considerations, stress concentrations, etc.). See MPEP 2144.04(V)(C), additionally In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961).
Response to Arguments
Applicant's arguments regarding the 35 U.S.C. § 102(a)(1) rejections of Claims 1, 5, 6-7, and 12-15 have been fully considered but they are not persuasive for these reasons:
Regarding Applicant’s assertion that King does not anticipate newly amended Claim 1 of the instant application (page 2, lines 15-25; page 3, lines 1-8), the Examiner disagrees, noting that the cited example embodiment of King (the embodiment depicted in Fig. 10A) that supposedly lacks claimed features such as the annular groove’s location between the “connecting portion” and “large diameter portion”, was not referenced nor relied upon in the rejection of Claim 1 or any claim in the first Office action. The mapped “connecting portion” of King is element A4, found in Diagram 2 – annotated inset of King – Fig. 5, therefore the “annular groove” A3 in Diagram 2 remains disposed between the “connecting portion” and “large diameter portion” 150 as depicted in Diagram 2.
The additional assertion that the “sealing gasket” equivalent in King (“retention element” 132, additionally note that, in page 3, line 2 of Applicant’s argument, Applicant’s asserted “retention element” 432 is part of the same embodiment depicted in King -– Fig. 10A and is also not referenced in any first Office action claim rejection) lacks a “fitting portion” and an “outer annular portion”, is unpersuasive. The Applicant has not provided an alternative definition for these words in the specification, therefore the Examiner maintains that, given the plain meaning of the words “fitting” and “outer annular”, a circular cross-section O-ring possesses two portions, an inner portion that “fits” or tightly abuts against a round object, and a corresponding “outer” portion, having an “annular” shape. Therefore, the 35 U.S.C. § 102(a)(1) rejections are maintained.
Applicant's arguments regarding the 35 U.S.C. § 103 rejections of Claims 8-10 over King in view of Hauser and Claim 11 over King in view of Hauser in further view of Breitfeld, have been fully considered but they are not persuasive for these reasons:
In response to applicant's arguments against the references individually, one cannot show non-obviousness 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). In page 4, line 18, Applicant asserts that Hauser fails to disclose, teach, or suggest a structure that could be deemed the equivalent of a “sealing gasket” in Claim 1, however, the “sealing gasket” is taught by King, which anticipates Claim 1. Similarly, on page 4, lines 20-24, Applicant asserts that the “upper sealing ring” of Breitfeld is meant to be equivalent to the “sealing gasket” in the invention, while that mapping was never made in the first Office action.
Allowable Subject Matter
Applicant's arguments regarding the new Claim 16 and, using that same rationale retroactively applied to Claims 2, 4, and 8-11, have been considered and - in light of the amendment - are persuasive. The related rejections have been withdrawn, and Claim 16 is allowable over the prior art.
Claims 2, 4, and 8-11 are objected to as depending on a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record, King, does teach a slot 142 passing through the tapered ring 140, but does not teach the slot passing through and dividing the other components of the annular body to create two “free ends” of the entire annular body.
This rationale is applicable to King as well as Hauser, as Applicant argues in page 12, line 20. In addition to Applicant’s arguments, against a different hypothetical interpretation of the “free end” limitation, Hauser’s keyways could not be engaged independently, one at a time, to create a loose “free end” on either opposite side due to the wheel’s rigid metallic composition.
Regarding Applicant’s further argument against Breitfeld on page 13, line 3, the Examiner agrees that, because of the absence of a slot from Breitfeld (and/or King/Hauser), the §103 rejection cannot be maintained. Additionally, the presence of a slot opposite the engaging portion that completely separates the annular body into two halves would render the hook-type “engaging portions” non-functional, because the expanding elastic restoring force of Breitfeld’s complete ring in Figs. 7-8 is required for the movement limiter 24 having contact surfaces 32 and 33 to effectively engage with cavity 25 having the opposing contact surfaces 34 and 35.
Regarding the prior art made of record but not relied upon for rejection, specifically Nago and Tanzer-Kargl, the slots shown by both references (“cut out portion” 66 and “ring gap” 27 respectively) are not depicted as passing through all portions of the annular body, and would be insufficient to anticipate the claimed invention for the same reasons as King. It would not be possible to modify King, Hauser, Breitfeld, Nago, or Tanzer-Kargl to include the entirely separate free ends of the annular body without resorting to impermissible hindsight.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mitchell James Price whose telephone number is (571)272-3729. The examiner can normally be reached Mon - Thurs 8:00 - 5:00 Eastern, Fri 8:00 - 12:00 Eastern.
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/Mitchell James Price/Examiner, Art Unit 3611 /VALENTIN NEACSU, Ph.D./Supervisory Patent Examiner, Art Unit 3611
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