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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/16/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 21-24, 26, 30, 32-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25 of U.S. Patent No. 12,065,106 to Rosenqvist.
Regarding claims 21, 26, 30, 32-34 and 36-37, Rosenqvist discloses the elements of these claims.
Regarding claims 22-24, the configuration recited in claim 25 of Rosenqvist is capable of attaching to a truck bed (via a truck bed cross bar), to a rooftop of the vehicle (via a rooftop cross bar) and to an exterior surface of the vehicle (via a cross bar).
Regarding claim 35, the configuration recited in claim 25 of Rosenqvist is capable of attachment to a truck (via a truck bed cross bar).
Claim 31 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 25 of Rosenqvist in view of US Patent 8,496,145 to Sautter.
Regarding claim 31, Rosenqvist fails to disclose whether the wheel is a front or rear wheel. However, Sautter discloses using a wheel holder to support a front wheel (Col. 1, lines 32-36). It would have been obvious to one of ordinary skill to have used the holder to support a front bicycle wheel because it only involves choosing from a finite number of predictable wheel types (i.e. front or rear) to support with the wheel holder.
Claim 40 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 24 of Rosenqvist.
Regarding claim 40, Rosenqvist discloses the elements of this claim.
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.
Claims 27 and 29 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.
Regarding claims 27 and 29, the term “about 20 degrees” is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
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.
Claim(s) 21-30, 32-34, 37 and 39 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Published Application 2006/0273124 to Bogoslofski.
Regarding claim 21, Bogoslofski discloses a wheel holder for a vehicle for attaching a wheel of a bicycle to the vehicle, the wheel holder comprising: a docking device comprising a load connecting portion (58) and a wheel holding member (22), wherein the load connecting portion is configured to attach to the vehicle (Fig. 1), wherein the wheel holding member is configured to releasably attach to the load connecting portion and the wheel (Fig. 5), and wherein attachment of the wheel holding member to the load connecting portion secures the wheel holding member in a wheel holding position (Fig. 5 – when the wheel holding member is secured to the load connecting portion (and knob 36 is tight), the wheel holding member is secured in a wheel holding position).
Regarding claim 22, Bogoslofski discloses wherein the load connecting portion is configured to attach to a truck bed (the load connecting portion is capable of this intended use, for example by attaching it to the sidewalls of the truck bed).
Regarding claim 23, Bogoslofski discloses wherein the load connecting portion is configured to attach to a rooftop of the vehicle (Fig. 1).
Regarding claim 24, Bogoslofski discloses wherein the load connecting portion is configured to attach to an exterior surface of the vehicle (Fig. 1).
Regarding claim 25, Bogoslofski discloses wherein the wheel holding member is configured to attach to the load connecting portion by translating the wheel holding member toward the load connecting portion in a vertical direction (Fig. 5 – the wheel holding member can be attached by lowering it vertically toward the load connecting portion (58) and securing it with clamp 60 and bolts 62).
Regarding claim 26, Bogoslofski discloses wherein the wheel holding member is configured to releasably attach to the load connecting portion at a predetermined attachment position (Fig. 5 – the releasable attachment along 58 is capable of being made at a location predetermined by the user).
Regarding claim 27, Bogoslofski discloses wherein the wheel holding member is configured to extend at a predetermined angle from vertical of less than about 20 degrees from vertical in the predetermined attachment position (Fig. 5 – the wheel holding member extends vertically upward).
Regarding claim 28, Bogoslofski discloses wherein the wheel holding member is configured to extend horizontally in the predetermined attachment position (Fig. 3).
Regarding claim 29, Bogoslofski discloses wherein the wheel holding member is configured to extend at a predetermined angle from vertical of less than about 20 degrees in a first state, and the wheel holding member is configured to extend horizontally in a second state (Fig. 4).
Regarding claim 30, Bogoslofski discloses wherein the wheel holding member is spaced apart from a frame of the bicycle (Fig. 1).
Regarding claim 32, Bogoslofski discloses a system for transporting a bicycle, the system comprising: a wheel holder comprising a load connecting portion (58) and a wheel holding member (20, 22), wherein the load connecting portion is configured to be attached to a vehicle (Fig. 1), wherein the wheel holding member is configured to releasably attach to the wheel (Fig. 5), and wherein attachment of the wheel holding member to the load connecting portion secures the wheel holding member in a wheel holding position (Fig. 5 – when the wheel holding member is secured to the load connecting portion (and knob 36 is tight), the wheel holding member is secured in a wheel holding position).
Regarding claim 33, Bogoslofski discloses wherein the wheel holding member is configured to receive an axle of the wheel (Fig. 5).
Regarding claim 34, Bogoslofski discloses wherein the wheel is a bicycle wheel Fig. 5; para. 0007).
Regarding claim 37, Bogoslofski discloses wherein the wheel holding member comprises a recess (Fig. 5 – indentation in 20 receiving upper portion of 58) configured to receive a guiding protrusion (Fig. 5 – upper protruding portion of 58) of the load connecting portion.
Regarding claim 39, Bogoslofski discloses wherein the wheel holding member is configured to adjust between a first predetermined attachment position and a second predetermined attachment position (Fig. 4).
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) 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bogoslofski.
Regarding claim 31, Bogoslofski fails to disclose whether the wheel is a front or rear wheel. However, using the wheel holder to support a front wheel would have been obvious because it only involves choosing from a finite number of predictable wheel types (i.e. front or rear) to support with the wheel holder.
REJECTION BASED ON BOGOSLOFSKI IN VIEW OF HALL
Claim(s) 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bogoslofski in view of US Patent 5,476,201 to Hall.
Regarding claim 21, Bogoslofski discloses a wheel holder for a vehicle for attaching a wheel of a bicycle to the vehicle, the wheel holder comprising: a docking device comprising a load connecting portion (20/32/34/60) and a wheel holding member (22), wherein the load connecting portion is configured to attach to the vehicle (Figs. 1, 5), wherein the wheel holding member is configured to releasably attach to the load connecting portion and the wheel (Fig. 5; releasably attached to the load connecting portion via threaded rod and knob 36 – see para. 0023), and wherein attachment of the wheel holding member to the load connecting portion secures the wheel holding member in a wheel holding position (Fig. 5 – when the wheel holding member is secured to the load connecting portion (and knob 36 is tight), the wheel holding member is secured in a wheel holding position). To the extent the removable threaded rod is not clear, Hall discloses a bicycle carrier including a fastener that includes a removable threaded rod (56). It would have been obvious to one of ordinary skill to have made the threaded rod removable in Bogoslofski because the modification only involves a simple substitution of one known, equivalent fastener for another to obtain predictable results. Further, a removable rod would allow for easy replacement as necessary.
Regarding claim 22, the combination from claim 21 discloses wherein the load connecting portion is configured to attach to a truck bed (the load connecting portion is capable of this intended use, for example by attaching to a truck bed cross bar).
REJECTION BASED ON ALTERNATIVE INTERPRETATION OF BOGOSLOFSKI
Claim(s) 32 and 35-38 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bogoslofski.
Regarding claim 32, Bogoslofski discloses a system for transporting a bicycle, the system comprising: a wheel holder comprising a load connecting portion (20/32/34/60) and a wheel holding member (22), wherein the load connecting portion is configured to be attached to a vehicle (Figs. 1, 5), wherein the wheel holding member is configured to releasably attach to the wheel (Fig. 5), and wherein attachment of the wheel holding member to the load connecting portion secures the wheel holding member in a wheel holding position (Fig. 5 – when the wheel holding member is secured to the load connecting portion (and knob 36 is tight), the wheel holding member is secured in a wheel holding position).
Regarding claim 35, Bogoslofski discloses wherein the vehicle is a truck (the load connecting portion is capable of attaching to a truck, for example by attaching to a truck bed cross bar).
Regarding claim 36, Bogoslofski discloses wherein the load connecting portion comprises a recess (Fig. 2 – recess between 32 and 34) configured to receive a guiding protrusion of the wheel holding member (the recess receives guiding protrusion 38).
Regarding claim 37, Bogoslofski discloses wherein the wheel holding member comprises a recess (opening formed between 28, 30, and 38 for receiving the shaft between 32 and 34 – para. 0023) configured to receive a guiding protrusion (the shaft – para. 0023) of the load connecting portion.
Regarding claim 38, Bogoslofski discloses wherein the wheel holder comprises a fixation device (one or two of bolts 62) configured to redundantly secure the wheel holding member and the load connecting portion in a predetermined attachment position.
REJECTION BASED ON HALL
Claim(s) 40 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Patent 5,476,201 to Hall.
Regarding claim 40, Hall discloses a method of mounting a wheel of a bicycle to a vehicle, comprising the steps of: attaching a load connecting portion (46) of a wheel holder to the vehicle (Fig. 3); attaching the wheel of the bicycle (32) to a wheel holding member (28) of the wheel holder; and attaching the wheel holding member to the load connecting portion by moving the wheel holding member towards the load connecting portion in a vertical direction (Fig. 3 – the bicycle frame is lifted upward onto the vehicle and lowered down vertically to engage 34 and 56), wherein the wheel holding member is configured to releasably attach to the load connecting portion (via 34/56).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The cited references disclose configurations similar to that disclosed by applicant.
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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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.
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/SCOTT T MCNURLEN/Primary Examiner, Art Unit 3734