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 .
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,239,465, alone or in view of official notice. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 11, 16 and 20 of the ‘465 patent includes the same or similar limitations to claims 1, 12, 15, and 20 of this application (noting e.g. that the recitation of claims 1-3 of the ‘465 patent’s recitations of the axis of rotation are all consistent with/similar to the axis of rotation being as recited in claim 1/12/15 simply using different language and relative to alternate portions of the tire, claim 16 of the ‘465 patent adds the limitation that the arms rotate in a circular plane similar to the recitations of claim 15 that the rotatable member which includes the arms rotates on a circular plane, and claim 11 of the ‘465 patent adds the limitation of the tire retaining arms being extending curved arms as recited in claim 15; claim 20 of the ‘465 patent adds the limitation of a resilient component similar to those claims 1 and 20, claim 1 of the ‘465 patent recites the arms inhibit vertical movement which is similar to/the same as restraining against vertical movement as recited in claim 20 of this application) as well as additional limitations (e.g. claim 1 of the ‘465 patent has limitations related to a bar) and so these claims are clearly obvious in view of the claims of the ‘465 patent, and the dependent claims add limitations that are similar to or the same as limitations of claims 1-20 of the ‘465 patent (e.g. claim 20 of the ‘465 patent discloses the resilient member can be a spring as recited in claim 4 of this application, claims 11 and 13 of the ‘465 patent recite that the tire retaining arms rotate to intersect between the spokes on a bicycle tire wheel similar to claims 7 or 16 of this application which requires that they interlock between the spokes, claim 18 adds the limitation that the retaining arms contact a metal portion of the rim which in view of the recitation of preventing vertical movement renders obvious the arms extending above the rim as recited in claim 9 and the distance of the rim between the arms is an obvious selection of an appropriate size or at most a mere change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04(IV)(A)), claim 17 of the ‘465 patent adds the limitation that the arms are angled at an upward angle of between about 10 and 60 degrees as recited in claim 11 of this application and also indicates that arms are angled as recited in claim 13 or 19 of this application, and claim 16 of the ‘465 patent recites that the arms rotate in a circular plane as recited in claim, claim 18 of the ‘465 recites that the arms contact the rim of the bike and claim 19 of the ‘465 recites that the arms restrain a tire in the closed position which renders obvious the arms restraining horizontal movement as recited in claim 14 (claim 1 of the ‘465 patent already indicates the arms restrain vertical movement, having the contact serve to frictionally hold or alternately clamp in place is obvious to better secure the tire in position while avoiding side-tire compressive forces that claim 19 indicates are undesirable) as well as restraining the tire from moving as recited in claim 18 of this application) or are obvious in view of those limitations and the knowledge of one of ordinary skill in the art (e.g. claim 5 of the ‘465 patent adds the limitation of a lock but does not specify a type and Examiner takes official notice that push-pin locks are an art known type of lock and so the push-pin lock of claims 3 and 17 are obvious in view of the ‘465 patent and official notice/the knowledge of one of ordinary skill in the art, claim 5 recites that the bicycle is mounted in a horizontal position in relation to a roof of the vehicle which is an obvious position given claim 1 of the ‘465 patent disclosing the bottom surface of the carrier being secured to a roof of the vehicle which is a horizontal surface, claim 6 recites a lack of straps or buckles to secure the bicycle wheel which is obvious as the claims of the ‘465 patent do not disclose the use of such straps or buckles).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,967,804. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 15, and 20 of this application have similar limitations to claims 1, 11, 16 and 20 of the ‘804 patent (noting e.g. that the recitation of claims 1-3 of the ‘804 patent’s recitations of the axis of rotation are all consistent with/similar to the axis of rotation being as recited in claim 1/12/15 simply using different language and relative to alternate portions of the tire, claim 16 of the ‘804 patent adds the limitation that the arms rotate in a circular plane similar to the recitations of claim 15 that the rotatable member which includes the arms rotates on a circular plane, and claim 11 of the ‘804 patent adds the limitation of the tire retaining arms being extending curved arms as recited in claim 15; claim 20 of the ‘804 patent adds the limitation of a resilient component similar to those claims 1 and 20, claim 1 of the ‘804 patent recites the arms inhibit vertical movement which is similar to/the same as restraining against vertical movement as recited in claim 20 of this application) as well as additional limitations (e.g. claims 1-2 of the ‘804 patent has limitations related to a bar) and so these claims are clearly obvious in view of the claims of the ‘804 patent, and the dependent claims add limitations that are similar to or the same as limitations of claims 1-20 of the ‘465 patent (e.g. claim 20 of the ‘804 patent discloses the resilient member can be a spring as recited in claim 4 of this application, claims 11 and 13 of the ‘804 patent recite that the tire retaining arms rotate to intersect between the spokes on a bicycle tire wheel similar to claims 7 or 16 of this application which requires that they interlock between the spokes, claim 18 of the ‘804 patent adds the limitation that the retaining arms contact a metal portion of the rim which in view of the recitation of preventing vertical movement renders obvious the arms extending above the rim as recited in claim 9 and the distance of the rim between the arms is an obvious selection of an appropriate size or at most a mere change in size/proportion which does not patentably distinguish over the prior art (MPEP 2144.04(IV)(A)), claim 17 of the ‘804 patent adds the limitation that the arms are angled at an upward angle of between about 10 and 60 degrees as recited in claim 11 of this application and also indicates that arms are angled as recited in claim 13 or 19 of this application, and claim 16 of the ‘804 patent recites that the arms rotate in a circular plane as recited in claim 10, claim 18 of the ‘804 recites that the arms contact the rim of the bike and claim 19 of the ‘804 recites that the arms restrain a tire in the closed position which renders obvious the arms restraining horizontal movement as recited in claim 14 (claim 1 of the ‘804 patent already indicates the arms restrain vertical movement, having the contact serve to frictionally hold or alternately clamp in place is obvious to better secure the tire in position while avoiding side-tire compressive forces that claim 19 indicates are undesirable) as well as restraining the tire from moving as recited in claim 18 of this application) or are obvious in view of those limitations and the knowledge of one of ordinary skill in the art (e.g. claim 5 of the ‘804 patent adds the limitation of a lock but does not specify a type and Examiner takes official notice that push-pin locks are an art known type of lock and so the push-pin lock of claims 3 and 17 are obvious in view of the ‘804 patent and official notice/the knowledge of one of ordinary skill in the art, claim 5 recites that the bicycle is mounted in a horizontal position in relation to a roof of the vehicle which is an obvious position given claim 1 of the ‘804 patent disclosing the bottom surface of the carrier being secured to a roof of the vehicle which is a horizontal surface, claim 6 recites a lack of straps or buckles to secure the bicycle wheel which is obvious as the claims of the ‘804 patent do not disclose the use of such straps or buckles).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,292,395. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the ‘395 patent have the same or similar limitations to those of this application, and all of the limitations of the claims of this application are obvious in view of the claims of the ‘395 patent, alone or in view of official notice/the knowledge of one of ordinary skill in the art (see the double patenting rejections over the similar ‘465 and ‘804 patents above for details).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM J WAGGENSPACK whose telephone number is (571)270-7418. The examiner can normally be reached M-F 8:30-4:30.
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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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/ADAM J WAGGENSPACK/Primary Examiner, Art Unit 3734