DETAILED ACTION
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, (a) the first and second inserts being configured to be received in a respective bike fork end (claim 10) and the first and second elongated shafts having threaded portions that convert the adapter between open and closed positions (claim 21) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. See the Section 112(a) rejection below for more discussion.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 10-15 and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 10, the disclosure fails to describe the inserts being received in a respective bike fork end. The disclosure only states that the inserts may be “adapted to the dimensions of the fork” (see Applicant’s para. 0032, for example), which does not support the inserts being received in the fork, but only changing the size of the mounting aid to abut the particular forks. The abutting relationship would be expected from, for example, applicant’s Figs. 24-25.
Regarding claim 21, the disclosure fails to describe the first and second elongated shafts having threaded portions with the handle causing the first threaded portion to threadedly advance along the second threaded portion to convert the adapter between the open and closed positions. Instead, the disclosure describes the handle (472/466) threadedly engaging a threaded portion of the first elongated shaft (440) to move the first elongated member, and the handle engaging the second elongated shaft (450) by the urging member (464) (see Fig. 25 and applicant’s para. 0164 of the filed specification).
Claims 11-15 depend from the above claim(s) and are rejected for the above reason as they do not cure the deficiency.
Claim Rejections - 35 USC § 112(b)
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 9 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 9, it should read “[[a]] the handle” to properly refer to the handle introduced in claim 1.
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.
Claim(s) 1-2 and 5-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 7,757,914 to Book in view of US Patent 8,075,065 to Mercat.
Regarding claim 1, Book discloses an adapter (68) fixable to a fork of a bike, the adapter comprising: an elongated main portion (Figs. 7a-c – 78 (housing receiving skewer)) comprising a first end (left end in Fig. 7a) and a second end (right end in Fig. 7a) opposite the second end wherein the first end and second end are spaced apart along a longitudinal axis; and a quick release skewer clamping mechanism configured to clamp a first end portion and a second end portion of the fork, the quick release skewer clamping mechanism comprising a first movable clamp (120) and a second movable clamp (136); and a handle (159) coupled to the quick release skewer clamping mechanism, wherein the first movable clamp comprises a first force application surface (120) opposed to the first end of the main portion, the second movable clamp comprises a second force application surface (136) opposed to the second end of the main portion, and the first movable clamp and the second movable clamp are movable relative to the main portion such that the adapter is convertible between an open position (Fig. 6b/4d) and a closed position (Fig. 6a/4e), wherein in the open position the first force application surface is farther from the first end of the main portion along the longitudinal axis and the second force application surface is farther from the second end of the main portion along the longitudinal axis than in the closed position. Book fails to disclose rotating the handle about the longitudinal axis. However, Mercat discloses a bicycle skewer including a handle that is rotated relative to an elongate main portion about the longitudinal axis (see Fig. 2, for example). It would have been obvious to one of ordinary skill to have used Mercat’s handle as the tightening mechanism in Book because the modification only involves a simple substitution of one known, equivalent skewer handle tightening element for another to obtain predictable results.
Regarding claim 2, the combination from claim 1 discloses wherein the main portion comprises a first support opening (Book Fig. 7a – opening on left of housing receiving 80) and a second support opening (Book Fig. 7a – opening on right of housing receiving 92), wherein the first movable clamp comprises a first elongated shaft (80 – Book Fig. 7a) slidably accommodated in the first support opening and the second movable clamp comprises a second elongated shaft (92 – Book Fig. 7a) slidably accommodated in the second support opening.
Regarding claim 5, the combination from claim 1 discloses wherein the first elongated shaft and the second elongated shaft extend along a longitudinal axis (Book Figs. 7a-c), and the main portion comprises a rib (Book Annotated Fig. 7a below) that extends radially outward relative to the longitudinal axis and circumferentially about the longitudinal axis.
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Book Annotated Fig. 7a
Regarding claim 6, the combination from claim 1 discloses a first spring (148 – Book) disposed against a first surface of the main portion (inner surface of 78 – Book Fig. 8a) and configured to bias the first movable clamp away from the closed position toward the open position (Book Figs. 7a-c, 8a).
Regarding claim 7, the combination from claim 1 discloses wherein the first movable clamp and the second movable clamp are coupled such that force applied to the first movable clamp or the second movable clamp is transferred to the other of the first movable clamp and the second movable clamp (force applied by the lever draws both clamps inward – Book Figs. 6a/4e).
Regarding claim 8, the combination from claim 1 discloses wherein the first movable clamp and the second movable clamp are coupled by an adjustment assembly (torque limiter (Mercat – last sentence of abstract; Figs. 6-7) plus 144 – Book Figs. 7a-8a) configured to adjust a distance between the force application surfaces (144 adjusts this distance).
Regarding claim 9, the combination from claim 1 discloses wherein the adjustment assembly comprises a torque limiter (Mercat – last sentence of abstract; Figs. 6-7) and the handle (handle in Mercat Fig. 2) coupled to the first clamp and the second clamp by the torque limiter such that up to a predetermined amount of torque applied to the handle is transferred as axial force upon the first movable clamp and the second movable clamp through the torque limiter.
Claim(s) 3-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Book and Mercat, further in view of US Patent 9,216,699 to Flaherty.
Regarding claim 3, the combination from claim 1 discloses wherein the second support opening is configured to prevent the second elongated shaft from rotating relative to the main portion (via flat portion 92 – Book Fig. 7a). The combination fails to disclose both openings and shafts configured to prevent rotation. However, Flaherty discloses a bicycle carrier in which both shafts are configured to prevent rotation (via flat portion 88 – Fig. 10). It would have been obvious to one of ordinary skill to have made both shafts to prevent rotation because it would make the anti-rotation feature stronger and more robust. Further, the modification only involves a mere duplication of known elements having only predictable results. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 4, the combination from claim 3 discloses wherein each of the elongated shafts comprises a flat outer surface section and each of the support openings comprises a correspondingly shaped flat inner surface section (Book/Flaherty).
REJECTION BASED ON BUDD
Claim(s) 16 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 9,376,065 to Budd in view of EP 0602,273 to Barbieri.
Regarding claim 16, Budd discloses a bike carrier system comprising: a bike fork adapter (14) configured to receive first and second prongs of a fork of a bike (Fig. 1), wherein the bike fork adapter extends along a longitudinal axis defined relative to the bike fork adapter and a bike carrier (Fig. 1) comprising a supporting unit (Fig. 4) configured to receive the bike fork adapter in a receiving direction (downward in Fig. 4) defined relative to the supporting unit, wherein the supporting unit comprises: a locking mechanism (30, 36, 40, 60) configured to retain the bike fork adapter in the supporting unit when the locking mechanism is in a locked state (Fig. 5). Budd fails to disclose a rib and slot. However, Barbieri discloses a bicycle bracket that includes mating ribs (18a/b) extending radially outward from a longitudinal axis and circumferentially about the longitudinal axis and slots (13) for securing a cylindrical object in the bracket. It would have been obvious to one of ordinary skill to have included ribs in the adapter and slots in the supporting unit to provide better securement and stabilization of the adapter in the supporting unit.
Regarding claim 18, the combination from claim 16 discloses wherein the locking mechanism comprises a first locking member (30 – Budd) and a second locking member (36 – Budd) configured to clamp the bike fork adapter when the locking mechanism is in the locked state, and wherein either the first locking member or the second locking member comprises the slot (Barbieri – 13; at least one of the members would have the slots).
Regarding claim 19, the combination from claim 16 discloses wherein the first locking member comprises a movable locking member (30 – Budd) configured to move relative to the second locking member (36 – Budd) when the locking mechanism transitions from an unlocked state to the locked state, and the movable locking member comprises the slot (Barbieri – 13). To the extent moving the slots from the stationary member to the movable member is required, such a change would have been obvious because it only involves a mere rearrangement of known parts having predictable results. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Claim(s) 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Budd and Barbieri, further in view of US Patent 2,211,600 to Faulhaber.
Regarding claim 20, the combination from claim 16 discloses wherein the second locking member (36 – Budd) comprises a stationary locking member configured to remain stationary when the locking mechanism transitions from the unlocked state to the locked state, and the slot is a first slot. The combination fails to disclose the stationary locking member having a second slot. However, Faulhaber discloses a bicycle bracket that includes holding mechanisms (in this case ribs 28) on holding brackets on opposite sides of a cylindrical object (20). It would have been obvious to one of ordinary skill to have included slots on opposite sides of the adapter (i.e. on both the movable and stationary locking member) in the combination to hold the adapter more securely in the mount. Further, the modification only involves a mere duplication of known elements having only predictable results. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Allowable Subject Matter
Claims 17 and 22 are objected to as being dependent upon 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.
Response to Arguments
Applicant's arguments filed 3/17/2026 have been fully considered but they are not persuasive.
As to applicant’s argument that Book fails to disclose a handle that rotates about the longitudinal axis (page 9), see the new rejection of claim 1 above based on Book and Mercat.
As to applicant’s argument that the prior art fails to disclose the inserts being configured to be received in the bike fork ends (page 12), see the Section 112(a) rejection above.
As to applicant’s argument that the Budd/Barberi combination is improper (page 15), the examiner disagrees. To the extent applicant is arguing that Barberi is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Barberi is directly related to bicycles, and its method for securely holding a cylinder within a holder is at least reasonably pertinent to how to hold a bicycle in a carrier, which is known to sometimes involve holding some form of the axle or a cylinder within a holder (see the base reference, US Patent 9,376,065 to Budd, for example).
As to applicant’s argument that Barberi’s purpose for the ribs and slots does not apply to Budd (page 15), Barberi is using the rib and slot to securely hold the cylinder in place in the holder, which would also be useful for holding Budd’s cylinder in place in the bike holder.
As to applicant’s argument that Budd’s cylinder is already held securely (page 15), increasing the security and stability of the connection between the bicycle and the carrier is always a concern in this art. Barberi could have just used the friction of the cylinder within the holder to secure the cylinder, but instead they added ribs and slots to make a more secure connection. In the same way, Budd discloses the clamping mechanism holding the cylinder within the holder, but adding ribs and slots would make a more secure connection.
It is also noted for applicant’s reference that US Patent 4,111,593 to Carillo discloses another cylinder (26) that is held within a sleeve (33) and secured using ribs (29/30) and slots (37).
Conclusion
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 SCOTT T MCNURLEN whose telephone number is (313)446-4898. The examiner can normally be reached M-F 8am-5pm.
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/SCOTT T MCNURLEN/Primary Examiner, Art Unit 3734
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