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 .
Response to Arguments
Applicant’s arguments, see pages 4-6, filed February 24th, 2026, with respect to the claim rejections under 35 U.S.C. §102 & 35 U.S.C. §103 have been considered but are moot because the new grounds of rejection are necessitated by Applicant’s amendments, the instant Office action has been made final.
Response to Amendment
This office action is in response to the amendments and / or remarks filed on February 24th, 2026. Claims 1-33, 35, and 37-38 are cancelled. Claims 34, 36, 39-41 remain pending and are currently being examined.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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 34, and 39-40 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 11 of U.S. Patent No. 12127653 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other.
Here US Patent No. 12127653 B2 claims 1 and 11 recite:
Claim 1: A stabilized luggage article comprising: a luggage article comprising a bottom wall, a top wall, opposed first and second major faces, and opposed first and second side walls that define a cavity for storage space; a plurality of wheel assemblies mounted on the bottom wall proximate the first major face of the luggage article, the first major face portion forming a corner portion with a respective side wall, and a stem portion protruding from the corner portion, each wheel assembly comprising a pivot member that extends downwardly from the bottom wall, the pivot member having a vertical axis of rotation that is projected toward the first major face by the stem portion but not beyond the first major face of the luggage article; and one or more wheels mounted to the pivot member, the one or more wheels rotatable around a horizontal axis and rotatable around the vertical axis, the horizontal axis spaced laterally from the vertical axis of the pivot member, wherein the pivot member extends downwardly to at least the horizontal axis, wherein the pivot member is a substantially cylindrical pivot post and is substantially perpendicular to the bottom wall, and the horizontal axis of wheel rotation is laterally spaced from the vertical axis of the pivot post by a distance of about 5 mm to about 30 mm.
Claim 11: A stabilized luggage article comprising: a luggage article of generally rectangular shape comprising a bottom wall, a top wall, opposed front and back walls, and opposed side walls that define a cavity for storage space; a pair of front wheel assemblies located on opposite ends of the bottom wall wherein each wheel assembly comprises: a base attached to the bottom wall and a shoulder plate extending vertically from the base and attached to a respective side wall, the base and shoulder plate forming a corner portion proximate the front wall and adjacent the respective side wall from which corner portion a pivot member is projected toward but not beyond the front wall, the pivot member extending downwardly from and substantially perpendicular to the base, the pivot member having a vertical axis of rotation, and one or more wheels mounted orthogonally to the pivot member and rotatable around a horizontal axis spaced laterally from the vertical axis of the pivot member, wherein the pivot member extends downwardly to at least the horizontal axis of wheel rotation, wherein the pivot member is a substantially cylindrical pivot post and is substantially perpendicular to the bottom wall, and the distance between the vertical midline of the shoulder plate and the vertical axis of the pivot post is between about 15 mm to about 35 mm, and wherein the pivot post is projected toward the front wall by a stem portion that extends outwardly from the corner portion toward the front wall.
While Patent Application No. 18/904,773 claims 34, and 39-40 require:
Claim 34: A wheel assembly for a stabilized luggage article, the stabilized luggage article comprising having a bottom wall, a top wall, opposed first and second major faces, and opposed first and second side walls that define a cavity for storage space, the wheel assembly configured to be mounted on the bottom wall proximate the first major face of the luggage article and comprising: a pivot member configured to extend downwardly from the bottom wall, the pivot member having a vertical axis of rotation that is projected toward but not beyond the first major face of the luggage article; and one or more wheels mounted to the pivot member, the one or more wheels rotatable around a horizontal axis and rotatable around the vertical axis, the horizontal axis spaced laterally from the vertical axis of the pivot member, wherein the pivot member extends downwardly to at least the horizontal axis.
Claim 39: wherein the wheel assembly comprises a stem portion that projects the pivot post toward the first major face.
Claim 40: wherein the lateral spacing of the horizontal axis of wheel rotation and the vertical axis of the pivot post is between about 5 mm and about 30 mm.
Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims cite similar limitations.
Claim 36 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12127653 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other.
Here US Patent No. 12127653 B2 claim 5 recites:
Claim 5: wherein the one or more wheels are mounted orthogonally to the pivot member.
While Patent Application No. 18/904,773 claim 36 requires:
Claim 36: wherein the one or more wheels are mounted orthogonally to the pivot member.
Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims cite similar limitations.
Claim 41 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 35 of U.S. Patent No. 12127653 B2 . Although the claims at issue are not identical, they are not patentably distinct from each other.
Here US Patent No. 12127653 B2 claim 35 recites:
Claim 35: wherein the distance is about 17 mm.
While Patent Application No. 18/904,773 claim 41 requires:
Claim 41: wherein the lateral spacing is about 17 mm.
Although the claims at issue are not identical, they are not patentably distinct from each other because the conflicting claims cite similar limitations.
Claim Rejections - 35 USC § 103
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 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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 34, 36, and 39 are rejected under 35 U.S.C. 103 as being unpatentable over Yeh et al. (US 20160366995 A1), in view of Erfinder (DE 102018101653 A1), with an English translation provided herein.
Regarding Claim 34, Yeh et al. teaches a wheel assembly (105) for a stabilized luggage article (100), the stabilized luggage article (100) comprising having a bottom wall (3 in Annotated Figure 3 below), a top wall (4 in Annotated Figure 3 below), opposed first and second major faces (2 in Annotated Figure 3 below), and opposed first (5 in Annotated Figure 3 below) and second side walls (6 in Annotated Figure 3 below) that define a cavity for storage space (wherein Yeh et al. teaches in claim 1 “a main body comprised of first and second shells operably connected to form a storage cavity when closed”), the wheel assembly (105) configured to be mounted on the bottom wall (3 in Annotated Figure 3 below) proximate the first major face (1 in Annotated Figure 3 below) of the luggage article (100) and comprising: a pivot member (7 in Annotated Figure 3 below) configured to extend downwardly from the bottom wall (3 in Annotated Figure 3 below), the pivot member (7 in Annotated Figure 3 below) having a vertical axis of rotation (wherein Yeh et al. teaches “one or more of the wheels are designed to be able to spin about the vertical axis of the main body when the luggage is in an upright position thus making the luggage easily steerable in all directions”) that is projected toward but not beyond the first major face (1 in Annotated Figure 3 below) of the luggage article (100); and one or more wheels (105) mounted to the pivot member (7 in Annotated Figure 3 below), the one or more wheels (105) rotatable (wherein the wheels roll) around a horizontal axis (H in Annotated Figure 3 below) and rotatable around the vertical axis (V in Annotated Figure 3 below), the horizontal axis (H in Annotated Figure 3 below) spaced laterally (lateral displacement indicated by L in Annotated Figure 3A below) from the vertical axis (V in Annotated Figure 3 below) of the pivot member (7 in Annotated Figure 3 below), wherein the pivot member (7 in Annotated Figure 3 below). (Figs. 1-3C; [0021], [0025])
Yeh does not teach wherein, the pivot member (2) is a pivot post (2) which is substantially perpendicular (as seen in Figure 13) to the bottom wall (5) and extends downwardly beyond the horizontal axis of wheel rotation (as indicated in Annotated Figure 13 below). (Fig. 13; [0028])
It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the invention to take suitcase as taught by Yeh et al., and provide for the pivot post extending beyond the horizontal axis as taught by Erfinder. Wherein through use of a known technique to a known device ready for improvement to yield predictable results; one would be motivated to provide for a pivot post extending beyond the horizontal axis of wheel rotation, in order to enhance stability of the luggage.
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Regarding Claim 36, Yeh et al. further teaches wherein the one or more wheels (105) are mounted orthogonally (as seen in Annotated Figure 3 above) to the pivot member (7 in Annotated Figure 3 above). (Figs. 1-3C; [0021], [0025])
Regarding Claim 39, Yeh et al. further teaches wherein the wheel assembly (105) comprises a stem portion (8 in Annotated Figure 3 above) that projects the pivot post (7 in Annotated Figure 3 above) toward the first major face (1 in Annotated Figure 3 above). (Figs. 1-3C; [0021], [0025])
Claims 40-41 are rejected under 35 U.S.C. 103 as being unpatentable over Yeh et al. (US 20160366995 A1), in view of Meersschaert et al. (US 20150130148 A1), and further in view of design choice.
Regarding Claim 40, Yeh et al. teaches all of the elements of the invention described in claim 33 above except; wherein the lateral spacing of the horizontal axis of wheel rotation and the vertical axis of the pivot post is between about 5 mm and about 30 mm.
Meersschaert et al. further teaches an offset (dimension X in Figure 4B) between a horizontal axis of wheel rotation (170’) and the vertical axis (168) of the pivot post (5 in Annotated Figure 5 below). (Wherein Meersschaert et al. teaches “The spinner wheel axis is positioned between the leading edge of the ledge structure and the offset position of the front edges 165, 169. The offset dimension X may be selected according the desired improvement in stability, and may include factors such as the general size of luggage case, the specific height, depth or width dimension…) (Figs. 4A-5; [0044]-[0045])
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It would have been prima facie obvious for a person having ordinary skill in the art before the effective filing date of the invention to take suitcase as taught by Yeh et al., and provide for an offset between the vertical rotational axis and wheel axis as taught by Meersschaert et al. Wherein through use of a known technique to a known device ready for improvement to yield predictable results; one would be motivated to provide for an offset between the vertical rotational axis and wheel axis, in order to enhance the stability of the luggage.
Yeh et al., Annotated above, remain silent regarding the lateral distance being from about 5mm to 30mm.
Although Yeh et al., Annotated above, does not specifically disclose this dimension. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement a lateral distance between the vertical axis and horizontal axis of about 5mm and 30mm. Since it has been held that where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device (MPEP 2144.04 IV, A). In the instant case, the device of Yeh et al., Annotated above, would not operate differently with the claimed dimensional constraints, as this example would be suitable for demonstrating an offset between the vertical and horizontal rotational axes.
Regarding Claim 41, Yeh et al., Annotated above, teaches all of the elements of the invention described in claim 40 above except; wherein the distance is about 17 mm.
Wherein Yeh et al. teaches a lateral spacing (L in Annotated Figure 3A above) between the horizontal axis (H in Annotated Figure 3A above) of wheel rotation and the vertical axis (V in Annotated Figure 3A above) of the pivot post (7 in Annotated Figure 3 above). (Figs. 1-3C; [0025])
Yeh et al. does not explicitly teach the horizontal axis of wheel rotation is laterally spaced from the vertical axis of the pivot post by a distance of about 17 mm.
Meersschaert et al. further teaches an offset (dimension X in Figure 4B) between a horizontal axis of wheel rotation (170’) and the vertical axis (168) of the pivot post (5 in Annotated Figure 5 above). (Wherein Meersschaert et al. teaches “The spinner wheel axis is positioned between the leading edge of the ledge structure and the offset position of the front edges 165, 169. The offset dimension X may be selected according the desired improvement in stability, and may include factors such as the general size of luggage case, the specific height, depth or width dimension…) (Figs. 4A-5; [0044]-[0045])
Yeh et al., Annotated above, remain silent regarding the lateral distance being from about 17 mm.
Although Yeh et al., Annotated above, does not specifically disclose this dimension. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to implement a lateral distance between the vertical axis and horizontal axis of about 17mm. Since it has been held that where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device (MPEP 2144.04 IV, A). In the instant case, the device of Yeh et al., Annotated above, would not operate differently with the claimed dimensional constraints, as this example would be suitable for demonstrating an offset between the vertical and horizontal rotational axes.
Conclusion
The prior art made of record and not relied upon is considered pertinent to the applicant’s disclosure.
Kim et al. (US 20210213777 A1), teaches a caster unit with a pivot post.
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 extension fee pursuant to 37 CFR E 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUSTIN R CAUDILL whose telephone number is (303)297-4349. The examiner can normally be reached on Monday-Friday 8:30-5:30 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, NATHAN JENNESS can be reached on (571) 270-5055. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUSTIN CAUDILL/Examiner, Art Unit 3733
/NATHAN J JENNESS/Supervisory Patent Examiner, Art Unit 3733 6 May 2026
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