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 .
Priority
1. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
2. The information disclosure statement (IDS) submitted on 10/27/2023 was filed prior to the mailing date of this action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
3. The amendment filed 10/27/2023 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows:
The attempt to incorporate subject matter into this application by reference to United Kingdom Application No. 2105973.8 is ineffective because the attempt to incorporate the subject matter is occurring after the filing date of the application which is the filing date of the PCT. Therefore, the attempt to incorporate the subject matter of United Kingdom Application No. 2105973.8 is considered new matter. Please correct the specification accordingly, such as by removing the language of “which applications are incorporated herein by reference in their entireties”.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Objections
4. Claims 1, 8-9 and 13-15 are objected to because of the following informalities:
Claim 1, line 4, “and an underside of the wing from an open channel” should read “and an underside of the wing [[from]] form an open channel” to provide increased clarity
Claim 8, “for removal of a tire from a wheel rim” should read “for removal of [[a]] the tire from [[a]] the wheel rim” to avoid the antecedent basis issue.
Claim 9, “wherein the flange extends from the side of the body” should read “wherein the flange extends from another side [[the side]] of the body” to avoid the antecedent basis issue.
Claim 13, “wherein the width” should read “wherein [[the]] a width” to avoid the antecedent basis issue.
Claim 14, “between the upper and lower portion of the body” should read “between the upper portion and a [[and]] lower portion of the body” to avoid the antecedent basis issue and provide increased clarity
Claim 15, “between the upper and lower portion of the body” should read “between the upper portion and the lower portion of the body” to provide increased clarity
Appropriate correction is required.
Claim Interpretation
5. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Such claim limitations which are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is/are:
Claims 3-4, “further comprising guiding means disposed upon the upper portion of the body for guiding the side wall of the tire upon the wing, wherein the guiding means is disposed along the body between the wing and the forward portion of the body”. Additionally, proper corresponding structure is provided as structure 17 as shown in instant figs. 1-2.
Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
Claim 5, “wherein the guiding means comprises a ramped protuberance formed upon the upper portion for lifting the side wall of the tire upon the wing”.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Rejections - 35 USC § 102
6. 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 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsu et al. (US PGPUB 20180290508), hereinafter Hsu.
Regarding claim 1, Hsu teaches a tool (fig. 1A-1B) for installing a tire on a wheel rim (fig. 2A-2B), the tool comprising:
a body (main body 110);
a wing (see annotated fig. 1A below) extending from an upper portion of the body (fig. 1A) to form an overhang over a side of the body (fig. 1A), such that the side of the body and an underside of the wing from an open channel (fig. 2B, open channel indicated by element 154) for receiving in use an outer peripheral portion of a wall of the wheel rim [0018], the channel extending between a forward portion and a rearward portion of the body (see annotated fig. 1A below); and
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the wing comprising a leading edge and an upper side (see annotated fig. 1A above) which are arranged to engage in use with a side wall of the tire (paragraph 0020, fig. 2B; the leading edge and upper side of the wing are arranged to engage in use with a side wall of the tire);
wherein the leading edge of the wing is swept toward the rearward portion of the body (see annotated fig. 1A above, wherein the leading edge is swept toward the rearward portion) and the upper side of the wing is curved about an axis which extends substantially along the channel, to form a convex profile (see annotated fig. 1B below, wherein the upper side of the wing is curved about an axis which extends substantially along the channel 154, to form a convex profile).
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Regarding claim 2, Hsu teaches the claimed invention as rejected above in claim 1. Additionally, Hsu teaches wherein a radius of curvature of the upper side of the wing about the axis increases from the leading edge toward a trailing edge of the wing (fig. 1A-1B, the upper side of the wing increases in radius of curvature from the leading edge towards the trailing edge).
Regarding claim 3, Hsu teaches the claimed invention as rejected above in claim 1. Additionally, Hsu teaches further comprising guiding means (This element is interpreted under 35 USC 112(f) as the corresponding structure and equivalents thereof, as detailed above. The guiding portion 140 and second edge E2 of fig. 1A are interpreted as the guiding means) disposed upon the upper portion of the body (fig. 1A) for guiding the side wall of the tire upon the wing (paragraph 0020, wherein the guiding means, as interpreted is capable of guiding the side wall of the tire upon the wing).
Regarding claim 4, Hsu teaches the claimed invention as rejected above in claim 3. Additionally, Hsu teaches wherein the guiding means (This element is interpreted under 35 USC 112(f) as the corresponding structure and equivalents thereof, as detailed above. The guiding portion 140 and second edge E2 of fig. 1A are interpreted as the guiding means) is disposed along the body between the wing and the forward portion of the body (fig. 1A).
Regarding claim 5, Hsu teaches the claimed invention as rejected above in claim 3. Additionally, Hsu teaches wherein the guiding means comprises a ramped protuberance (second edge E2 is interpreted as a ramped protuberance because it ramps from the concave surface 140 [0018]) formed upon the upper portion (fig. 1A) for lifting the side wall of the tire upon the wing (paragraph 0020, wherein the second edge E2 is capable of lifting the side wall of the tire upon the wing).
Regarding claim 6, Hsu teaches the claimed invention as rejected above in claim 1. Additionally, Hsu teaches further comprising an abutment surface (figs. 1A-1B, surface 150) for engaging with the side wall of the tire and deflecting the side wall of the tire upon the upper side of the wing (paragraph 0020, wherein the surface 150 is capable of engaging the side wall of the tire and deflecting the side wall of the tire upon the upper side of the wing).
Claim Rejections - 35 USC § 103
7. 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. 103 as being unpatentable over Hsu et al. (US PGPUB 20180290508), hereinafter Hsu.
Regarding claim 7, Hsu teaches the claimed invention as rejected above in claim 6.
Additionally, Hsu teaches the pressing portion 150 protrudes from the surface 130 [0018].
Hsu does not explicitly teach wherein the abutment surface comprises a quarter sphere.
However, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to provide wherein the abutment surface comprises a quarter sphere, since a change in shape of an element involves only ordinary skill in the art (MPEP 2144.04) absent persuasive evidence of the claimed configuration is significant (MPEP 2144.04 IV B). Additionally, no criticality has been provided, wherein the specification merely states that the abutment surface 18 comprises a quarter sphere, although it will be understood that any shaped surface which is capable of guiding a tire towards the wheel rim and aligning the tire with the wing 12 may be used. Additionally, providing wherein the shape is a quarter sphere would continue to provide a pressing portion 150 protruding from the surface 130, thereby continuing to allow the device to function as intended.
Claims 8-15 are rejected under 35 U.S.C. 103 as being unpatentable over Hsu et al. (US PGPUB 20180290508), hereinafter Hsu, in view of Hermansen et al. (US PGPUB 20130192767), hereinafter Hermansen.
Regarding claims 8-12, Hsu teaches the claimed invention as rejected above in claim 1. Hsu does not explicitly teach a flange for removal of a tire from a wheel rim, wherein the flange extends from the side of the body opposite the side from which the wing extends, wherein the flange is located proximate the rearward portion of the body, wherein the flange extends between the upper portion and a lower portion of the body, wherein the flange extends substantially perpendicularly to the body.
However, Hermansen teaches a tire lever which includes a hook 42 which creates a channel for receiving a wall of a wheel rim (fig. 7) and a removal hook 40 (fig. 3) located on the opposite side to be used for tire removal [0030]. Overall, Hermansen teaches a flange (figs. 3-9, removal hook 40) for removal of a tire from a wheel rim (fig. 9, [0030]), wherein the flange extends from the side of the body opposite the side from which the wing extends (fig. 3-6, the removal hook 40 extends from the side of the body opposite of the side from which the wing extends), wherein the flange is located proximate the rearward portion of the body (fig. 3-6, the flange is located “proximate” the rearward portion of the body), wherein the flange extends between the upper portion and a lower portion of the body (fig. 4, the flange extends between the upper portion and a lower portion of the body), wherein the flange extends substantially perpendicularly to the body (figs. 4-6, the flange extends substantially perpendicularly to the body).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified Hsu to incorporate the teachings of Hermansen to provide a flange for removal of a tire from a wheel rim, wherein the flange extends from the side of the body opposite the side from which the wing extends, wherein the flange is located proximate the rearward portion of the body, wherein the flange extends between the upper portion and a lower portion of the body, wherein the flange extends substantially perpendicularly to the body. Specifically, it would have been obvious to incorporate Hermansen’s removal hook 40 onto the tool of Hsu, wherein the hook extends from a side of the body of Hsu opposite from which the wing extends, wherein the hook is located proximate the rearward portion of the body of Hsu, wherein the hook extends between the upper and lower portion of the body of Hsu, wherein the hook extends substantially perpendicularly to the body of Hsu. Doing so would increase the utility of the tool of Hsu by providing a removal hook to remove the tire from the rim (as taught by Hermansen in at least fig. 9) for repairs and maintenance.
Regarding claims 13-15, Hsu, as modified, teaches the claimed invention as rejected above in claim 8. Hsu, as modified, does not teach wherein the width of the flange is 20- 60mm, wherein the width of the flange extending between the upper and lower portion of the body is 30-50mm, wherein the width of the flange extending between the upper and lower portion of the body is 40-50mm. Overall, Hsu, as modified, does not teach explicit sizes.
As such, Hsu, as modified, and the instant claimed invention both provide a tool for installing and uninstalling a tire on a wheel rim wherein the only difference between Hsu, as modified, and the instant claimed invention is a recitation of relative dimensions.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Hsu, as modified, to include wherein the width of the flange is 20- 60mm, wherein the width of the flange extending between the upper and lower portion of the body is 30-50mm, wherein the width of the flange extending between the upper and lower portion of the body is 40-50mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Hsu, as modified, would not operate differently with the claimed width since the tool would continue to be capable of installing and uninstalling a tire on a wheel rim. Further, it appears the applicant places no criticality on the claimed range.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Wu (US PGPUB 20160152101) teaches a tire tool with a flange similar to the claimed invention.
Bassett (US Patent 7556078) teaches a bicycle tire installation tool with a channel 701 similar to the claimed invention.
Werner (US PGPUB 20070240830) teaches a tire mounting lever similar to the claimed invention.
Ochoa (US Patent 6024151) teaches a tire mounting and demounting tool with a spherical ball portion (fig. 2)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A GUMP whose telephone number is (571)272-2172. The examiner can normally be reached Monday- Friday 9:00-5:30.
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, David Posigian can be reached at (313) 446-6546. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A GUMP/ Examiner, Art Unit 3723