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 .
Claim Rejections - 35 USC § 112
1. 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.
Claim 15 is 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 15, the limitation “a prepreg layer” renders the claim indefinite because it is unclear whether “a prepreg layer” refers to the previously recited “prepreg layers” or “at least one prepreg layer” as set forth in claim 10 or if it is distinct therefrom as implied by the claim construction.
Regarding claim 15, the phrase “and no non-woven layer” within the parenthesis renders the claim indefinite because it is unclear whether such phrase is part of the claimed invention.
Regarding claim 15, there is insufficient antecedent basis for “the ring part”.
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 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holstein (DE 4425592 A1).
Regarding claim 1, Holstein discloses a bicycle rim for bicycles (Abstract), comprising: at least one rim body (300, 400, 500) with a visible surface (unlabeled axially outboard surfaces of 11’ and 12’ as shown in Fig. 3B) perceptible in proper operation; wherein a supporting structure 10’ of the rim body is manufactured from fibrous composite materials consisting of prepreg layers (Figs. 2a, 2b and 3B; note at least the eighth paragraph on page 4 of the provided English language machine translation which states, in part, “a base body 10’ from a foam core with prepreg wrapping made of carbon fiber reinforced synthetic resin”); wherein the rim body comprises rim flanks (unlabeled, but best shown in Fig. 4d) disposed opposite one another, a rim well (unlabeled, but best shown in Fig. 4d), and a rim base (unlabeled, but best shown in Fig. 4d); the visible surface is formed by a thin, non-woven layer 11’, 12’ on the supporting structure (note at least the eighth paragraph on page 4 of the provided English language machine translation states, in part, “Instead of a film, a decoratively designed nonwoven material can also be used, in which case an excess resin is set in the prepreg and the excess resin penetrates the nonwoven and binds it into a resin body that is practically continuous from wall to wall”), so as to form during manufacturing, an optically appealing, visible surface on the rim body (Figs. 3B and 5B); and the non-woven layer on the rim body is an outer layer (evident from Fig. 3B) of a composite layer (layer formed of 10’, 11’ and 12’) such that at least one the prepreg layers is joined to the non-woven layer (note at least the eighth paragraph on page 4 of the provided English language machine translation states, in part, “Instead of a film, a decoratively deigned nonwoven material can also be used, in which case an excess resin is set in the prepreg and the excess resin penetrates the nonwoven and binds it into a resin body that is practically continuous from wall to wall”), and wherein the composite layer comprises said supporting structure of said prepreg layers and the non-woven layer (note at least the eighth paragraph on page 4 of the provided English language machine translation).
Note the newly added method of production limitation “wherein the composite layer is made previously to insertion into a manufacturing mold by joining at least one of the prepreg layers with the non-woven layer” is not afforded full patentable weight in a product claim (See MPEP 2113I. which states, in part, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted)”).
Regarding claim 2, Holstein further discloses the composite layer comprises two prepreg layers (prepreg tape 2a and prepreg tape 2b shown in Figs. 2a and 2b) with reinforcing fibers (i.e., “carbon fiber reinforcement”) in different orientations (Figs. 2a and 2b; note at least paragraphs 3-5 on page 4 of the provided English language machine translation), and the non-woven layer 11’, 12’.
Regarding claim 3, Holstein further discloses at least one prepreg layer 2a, 2b comprises unidirectional reinforcing fibers (Figs. 2a and 2b; note at least paragraphs 3-5 on page 4 of the provided English language machine translation).
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 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Holstein in view of Dal Pra’ (US 2008/0296961 A1).
Regarding claim 4, Holstein fails to expressly disclose the non-woven layer provides less than 10% or less than 5% of the stability of the rim body.
Dal Pra’, however, teaches a bicycle rim with a non-woven outer visible layer that can provide less than 10% or less than 5% of the stability of the rim body inasmuch as the outer visible layer can be fiberless and without structural capacity (paragraphs [0039] and [0073]).
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 bicycle rim of Holstein by forming its non-woven layer so that it provides less than 10% or less than 5% of the stability of the rim body, such as taught by Dal Pra’, with a reasonable expectation of success in minimizing the weight of the rim while also preventing the weakening of the rim if the outer layer becomes worn down.
Regarding claim 5, Holstein fails to expressly disclose the thickness of the non-woven layer is less than 5% of the wall thickness of the supporting structure of the rim body, and/or wherein the thickness of the non-woven layer is less than 0.1 mm.
Dal Pra’, however, teaches a bicycle rim in which the non-woven outer visible layer can have a thickness that is 0.1 mm (paragraphs [0026] and [0047]). Further, note a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%); In re Scherl, 156 F.2d 72, 74-75, 70 USPQ 204, 205-206 (CCPA 1946) (prior art showed an angle in a groove of up to 90° and an applicant claimed an angle of no less than 120°); In re Becket, 88 F.2d 684 (CCPA 1937) ("Where the component elements of alloys are the same, and where they approach so closely the same range of quantities as is here the case, it seems that there ought to be some noticeable difference in the qualities of the respective alloys."); In re Dreyfus, 73 F.2d 931, 934, 24 USPQ 52, 55 (CCPA 1934)(the prior art, which taught about 0.7:1 of alkali to water, renders unpatentable a claim that increased the proportion to at least 1:1 because there was no showing that the claimed proportions were critical); In re Lilienfeld, 67 F.2d 920, 924, 20 USPQ 53, 57 (CCPA 1933)(the prior art teaching an alkali cellulose containing minimal amounts of water, found by the Examiner to be in the 5-8% range, the claims sought to be patented were to an alkali cellulose with varying higher ranges of water (e.g., "not substantially less than 13%," "not substantially below 17%," and "between about 13[%] and 20%"); K-Swiss Inc. v. Glide N Lock GmbH, 567 Fed. App'x 906 (Fed. Cir. 2014)(reversing the Board's decision, in an appeal of an inter partes reexamination proceeding, that certain claims were not prima facie obvious due to non-overlapping ranges); In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).
From this teaching, 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 bicycle rim of Holstein by forming its non-woven layer to have a thickness of less than 0.1 mm with a reasonable expectation of success for minimizing the weight of the rim. Further, it is noted that there is no showing of unexpected results or criticality for Applicant’s outer layer thickness being less than 0.1 mm as opposed to 0.1 mm.
Claims 6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Holstein in view of Lo et al. (US 2018/0170097 A1; hereinafter “Lo”).
Regarding claim 6, Holstein fails to expressly disclose the weight per unit area of a fibrous material of the non-woven layer is 8 grams per square meter +/- 50%.
Lo, however, teaches a bicycle rim in which the visible outer layer 120 can be formed of a non-woven fibrous material (“randomly distributed fibers have no specific directionality” per paragraph [0021]) where the weight per unit area of the fibrous material of the non-woven layer is 8 grams per square meter +/- 50% ( “3 g/m2 to 40 g/m2” per paragraph [0021]).
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 by the bicycle rim of Holstein by forming the non-woven layer to have a fibrous material with a weight per unit area of 8 grams per square meter +/- 50%, such taught by Lo, with a reasonable expectation of success in providing a desired reinforcing of the bicycle rim while also minimizing the weight thereof.
Regarding claim 8, although Holstein further discloses the non-woven layer is configured as a non-woven prepreg comprising non-woven fibers and resin (note at least the eighth paragraph on page 4 of the provided English language machine translation), Holstein fails to expressly disclose the non-woven prepreg comprising randomly disposed non-woven fibers of different lengths.
Lo, however, teaches a bicycle rim in which the visible outer layer 120 can be configured as a non-woven prepreg comprising randomly disposed non-woven fibers of different lengths, and resin (paragraphs [0021] and [0033]).
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 by the bicycle rim of Holstein by forming the non-woven prepreg to have randomly disposed non-woven fibers of different lengths, and resin, such as taught by Lo, with a reasonable expectation of success in achieving a desired stiffness and strength for the non-woven layer.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Holstein in view of Poertner et al. (US 2011/0273001; hereinafter “Poertner”).
Regarding claim 7, although Holstein discloses the prepreg layers comprise continuous fibers (note at least the second paragraph on page 3 and the eighth paragraph on page 4 of the provided English language machine translation, Holstein fails to expressly disclose the fibers being cut to the layer size.
Poertner, however, teaches a bicycle rim in which the fibers of the prepreg layers are cut to the layer size (note at least paragraphs [0007-0008]).
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 by the bicycle rim of Holstein by cutting the fibers to the layer size, such as taught by Poertner, with a reasonable expectation of success in ensuring the prepreg are sufficiently reinforced as desired.
Allowable Subject Matter
Claims 10-14 are allowed.
Claim 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s argument, see the last paragraph on page 9 of Applicant’s amendment, filed 11 March 2026, with respect to amended independent claim 10 have been fully considered and are persuasive. The rejection of claim 10 under 35 USC 102(a)(1) has been withdrawn.
Applicant's arguments filed with respect to independent claim 1 have been fully considered but they are not persuasive. It is noted that all of Applicant’s arguments appear to be directed to the differences between the method of manufacturing Applicant’s bicycle rim and the method of manufacturing the bicycle rim of Holstein. However, the first set of claims (i.e., claims 1-8) are product claims directed to “A bicycle rim”. As noted above in Section 6, the patentability of a product does not depend on its method of production.
In response to Applicant’s argument that “film 11 or 12 of Holstein is considerably thicker and more stable and therefore does not cause any problems when inserting”, the Examiner notes that Holstein expressly teaches the layers 11’, 12’ on the supporting structure can be formed of a “decoratively designed nonwoven material” (note at least the eighth paragraph on page 4 of the provided English language machine translation). Applicant has provided no evidence that each of these decoratively designed nonwoven layers shown in Fig. 3B cannot reasonably be considered to be the claimed “thin, non-woven layer”.
In response to Applicant’s arguments that Holstein fails to disclose or suggest a composite layer produced outside the mold, the Examiner again notes the newly added method of production limitation set forth in claim 1 is not afforded full patentable weight in a product claim.
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 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
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