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
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy of German parent Application No. DE102019008796.8 (filed on 12/18/2019) and DE102020132208.9 (filed on 12/03/2020) has been submitted in parent Application No. 17/125,027 (filed on 12/17/2020).
Claim Objections
Claim 17 is objected to because of the following informalities that requires appropriate corrections:
In claim 17, line 1, the limitation “and hanger” should read -- and the hanger --.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5-8, 11-13, and 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shahana et al. (U.S. PGPUB 2004/0116222 A1 hereinafter referred to as “Shahana”).
In regards to claim 1, Shahana teach (Figures 1-7) a mounting set (first base member body 31 of the rear external gearshift device 12) configured to mount a gear changer (rear derailleur 27 of the rear external gearshift device 12) to a bicycle frame (rear dropout portion 30 of the frame body 2) of a bicycle (bicycle 1), the mounting set (first base member body 31) comprising: a hanger (second bracket body 41) having a first hanger opening (through-hole 41c) located at a first portion (second upper mounting portion 41a) of the hanger (second bracket body 41), and a second hanger opening (through-hole 41e) located at a second portion (second lower mounting portion 41b) of the hanger (second bracket body 41); a reinforcing element (first bracket body 40) having a first reinforcing opening (through-hole 40c) and a second reinforcing opening (screw hole 40f); a sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) being attached to the first portion (second upper mounting portion 41a) of the hanger (second bracket body 41); and a bolt (nut member 39) configured to be inserted through the first reinforcing opening (through-hole 40c); the hanger (second bracket body 41) and the reinforcing element (first bracket body 40) being separate components (as cleanly illustrated in figures 3-4); wherein the second hanger opening (through-hole 41e) and the second reinforcing opening (screw hole 40f) are configured to connect the gear changer (rear derailleur 27) to the mounting set (first base member body 31), while the bolt (nut member 39) is configured to engage the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) for connecting the mounting set (first base member body 31) to the bicycle frame (rear dropout portion 30 of the frame body 2) (i.e. based on the entire disclosure of Shahana: when the nut member 39 is inserted through the through-hole 41c in the second bracket body 41, said nut member 39 contact/engage the inner peripheral surface of the axially-extending cylindrical nut mounting member 46 that defines said through-hole 41c; and the female threaded portion 39a on nut member 39 is configured to be screwed onto the male threaded portion 29b on the hub axle 29a of the rear hub 29 of the rear wheel 5r; where the hub axle 29a of the rear hub 29 is disposed/received within the mounting slot 30a of the rear dropout portion 30 of the frame body 2. Therefore, the nut member 39 does engage/contact the inner peripheral surface of the axially-extending cylindrical nut mounting member 46, and said nut member 39 can indirectly connect the first base member body 31 to the rear dropout portion 30 of the frame body 2 via the hub axle 29a of the rear hub 29) (see also paragraphs 0013-0034).
In regards to claims 5-7, Shahana teach all intervening claim limitations as shown above. Shahana further teach (Figures 1-7), the bolt (nut member 39) including internal threads (female threaded portion 39a in the tubular shank 39b) that are configured to engage external threads (male threaded portion of the hub axle 29a) on a rear wheel axle (hub axle 29a of the rear hub 29) of the bicycle (bicycle 1); the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) being overmolded around the hanger (second bracket body 41 of the rear external gearshift device 12) to form a single unit (as clearly illustrated in figures 3-4, the axially-extending cylindrical nut mounting member 46 is constructed to be an one-piece unitary structure with the remaining parts of the second bracket body 41); and the gear changer (rear derailleur 27 of the rear external gearshift device 12) being is a rear derailleur (as clearly illustrated in figures 1-2).
In regards to claim 8, Shahana teach (Figures 1-7) a bicycle rear derailleur assembly (rear external gearshift device 12) comprising: a rear derailleur (rear derailleur 27) including a base member (second base member body 32), a movable member (movable member 34) having a cage assembly (chain guide 33) attached thereto, and a linkage (link mechanism 35) that couples the movable member (movable member 34) to the base member (second base member body 32) in a manner which operatively permit movement of the movable member (movable member 34) relative to the base member (second base member body 32); and a mounting set (first base member body 31) configured to mount the bicycle rear derailleur assembly (rear external gearshift device 12) to a bicycle frame (rear dropout portion 30 of the frame body 2) of a bicycle (bicycle 1); the mounting set (first base member body 31) including a hanger (second bracket body 41) that has a first hanger opening (through-hole 41c) located at a first portion (second upper mounting portion 41a) of the hanger (second bracket body 41) and a second hanger opening (through-hole 41e) located at a second portion (second lower mounting portion 41b) of the hanger (second bracket body 41), a reinforcing element (first bracket body 40) that has a first reinforcing opening (through-hole 40c) and a second reinforcing opening (screw hole 40f), a sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) that is attached to the first portion (second upper mounting portion 41a) of the hanger (second bracket body 41), and a bolt (nut member 39) that is configured to be inserted through the first reinforcing opening (through-hole 40c); the hanger (second bracket body 41) and the reinforcing element (first bracket body 40) being separate components (as cleanly illustrated in figures 3-4); wherein the second hanger opening (through-hole 41e) and the second reinforcing opening (screw hole 40f) are configured to connect the base member (second base member body 32) to the mounting set (first base member body 31), while the bolt (nut member 39) is configured to engage the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) for connecting the mounting set (first base member body 31) to the bicycle frame (rear dropout portion 30 of the frame body 2) (i.e. based on the entire disclosure of Shahana: when the nut member 39 is inserted through the through-hole 41c in the second bracket body 41, said nut member 39 contact/engage the inner peripheral surface of the axially-extending cylindrical nut mounting member 46 that defines said through-hole 41c; and the female threaded portion 39a on nut member 39 is configured to be screwed onto the male threaded portion 29b on the hub axle 29a of the rear hub 29 of the rear wheel 5r; where the hub axle 29a of the rear hub 29 is disposed/received within the mounting slot 30a of the rear dropout portion 30 of the frame body 2. Therefore, the nut member 39 does engage/contact the inner peripheral surface of the axially-extending cylindrical nut mounting member 46, and said nut member 39 can indirectly connect the first base member body 31 to the rear dropout portion 30 of the frame body 2 via the hub axle 29a of the rear hub 29) (see also paragraphs 0013-0034).
In regards to claims 11-13, Shahana teach all intervening claim limitations as shown above. Shahana further teach (Figures 1-7), the bolt (nut member 39) having internal threads (female threaded portion 39a in the tubular shank 39b) that are configured to engage external threads (male threaded portion of the hub axle 29a) on a rear wheel axle (hub axle 29a of the rear hub 29) of the bicycle (bicycle 1); and the bicycle rear derailleur assembly (rear external gearshift device 12) additionally comprising a b-pin (mounting shaft 50) that is configured to connect the base member (second base member body 32) of the rear derailleur (rear derailleur 27) to the mounting set (first base member body 31); wherein the b-pin (mounting shaft 50) is configured to be inserted through the second reinforcing opening (screw hole 40f) of the reinforcing element (first bracket body 40) and pass through a passage (tubular boss portion 32a) of the base member (second base member body 32) before being secured at the second hanger opening (through-hole 41e) of the hanger (second bracket body 41).
In regards to claim 15, Shahana teach (Figures 1-7) a mounting set (first base member body 31 of the rear external gearshift device 12) configured to mount a gear changer (rear derailleur 27 of the rear external gearshift device 12) to a bicycle frame (rear dropout portion 30 of the frame body 2) of a bicycle (bicycle 1), the mounting set (first base member body 31) comprising: a hanger (second bracket body 41) having a first hanger opening (through-hole 41c) located at a first portion (second upper mounting portion 41a) of the hanger (second bracket body 41), and a second hanger opening (through-hole 41e) located at a second portion (second lower mounting portion 41b) of the hanger (second bracket body 41); a reinforcing element (first bracket body 40) having a first reinforcing opening (through-hole 40c) and a second reinforcing opening (screw hole 40f); and a bolt (nut member 39) configured to be inserted through the first reinforcing opening (through-hole 40c); the hanger (second bracket body 41) and the reinforcing element (first bracket body 40) being separate components (as cleanly illustrated in figures 3-4); wherein the second hanger opening (through-hole 41e) and the second reinforcing opening (screw hole 40f) are configured to connect the gear changer (rear derailleur 27) to the mounting set (first base member body 31), while the bolt (nut member 39) is configured to connect the mounting set (first base member body 31) to the bicycle frame (rear dropout portion 30 of the frame body 2) (i.e. based on the entire disclosure of Shahana: the female threaded portion 39a on nut member 39 is configured to be screwed onto the male threaded portion 29b on the hub axle 29a of the rear hub 29 of the rear wheel 5r; and the hub axle 29a of the rear hub 29 is disposed/received within the mounting slot 30a of the rear dropout portion 30 of the frame body 2. Therefore, the nut member 39 can indirectly connect the first base member body 31 to the rear dropout portion 30 of the frame body 2 via the hub axle 29a of the rear hub 29) (see also paragraphs 0013-0034).
In regards to claim 16, Shahana teach all intervening claim limitations as shown above. Shahana further teach (Figures 1-7), the mounting set (first base member body 31 of the rear external gearshift device 12) additionally comprising a sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) that is attached to the first portion (second upper mounting portion 41a) of the hanger (second bracket body 41); wherein the bolt (nut member 39) is configured to engage the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) (as clearly illustrate in figure 4, when the nut member 39 is inserted through the through-hole 41c in the second bracket body 41, said nut member 39 contacts/engages the inner peripheral surface of the axially-extending cylindrical nut mounting member 46 that defines said through-hole 41c).
In regards to claim 17, Shahana teach all intervening claim limitations as shown above. Shahana further teach (Figures 1-7), the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) and the hanger (second bracket body 41 of the rear external gearshift device 12) being formed as a single piece (as clearly illustrated in figures 3-4, the axially-extending cylindrical nut mounting member 46 and the second bracket body 41 are formed as one-piece unitary structure).
Claims 1, 5, 7-8, 11-14, and 15-16 are alternatively rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shahana.
In regards to claim 1, Shahana teach (Figures 1-7) a mounting set (first base member body 31 of the rear external gearshift device 12) configured to mount a gear changer (rear derailleur 27 of the rear external gearshift device 12) to a bicycle frame (rear dropout portion 30 of the frame body 2) of a bicycle (bicycle 1), the mounting set (first base member body 31) comprising: a hanger (first bracket body 40) having a first hanger opening (through-hole 40c) located at a first portion (first upper mounting portion 40a) of the hanger (first bracket body 40), and a second hanger opening (screw hole 40f) located at a second portion (first lower mounting portion 40b) of the hanger (first bracket body 40); a reinforcing element (second bracket body 41) having a first reinforcing opening (through-hole 41c) and a second reinforcing opening (through-hole 41e); a sleeve (axially-extending cylindrical nut mounting member 46 formed on second upper mounting portion 41a) being attached (via the matting insertion of the positioning projection 40e into the positioning recess 41d, and by coupling the nut member 39 with the hub axle 29a) to the first portion (first upper mounting portion 40a) of the hanger (first bracket body 40); and a bolt (nut member 39) configured to be inserted through the first reinforcing opening (through-hole 41c); the hanger (first bracket body 40) and the reinforcing element (second bracket body 41) being separate components (as cleanly illustrated in figures 3-4); wherein the second hanger opening (screw hole 40f) and the second reinforcing opening (through-hole 41e) are configured to connect the gear changer (rear derailleur 27) to the mounting set (first base member body 31), while the bolt (nut member 39) is configured to engage the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) for connecting the mounting set (first base member body 31) to the bicycle frame (rear dropout portion 30 of the frame body 2) (i.e. based on the entire disclosure of Shahana: when the nut member 39 is inserted through the through-hole 41c in the second bracket body 41, said nut member 39 contact/engage the inner peripheral surface of the axially-extending cylindrical nut mounting member 46 that defines said through-hole 41c; and the female threaded portion 39a on nut member 39 is configured to be screwed onto the male threaded portion 29b on the hub axle 29a of the rear hub 29 of the rear wheel 5r; where the hub axle 29a of the rear hub 29 is disposed/received within the mounting slot 30a of the rear dropout portion 30 of the frame body 2. Therefore, the nut member 39 does engage/contact the inner peripheral surface of the axially-extending cylindrical nut mounting member 46, and said nut member 39 can indirectly connect the first base member body 31 to the rear dropout portion 30 of the frame body 2 via the hub axle 29a of the rear hub 29) (see also paragraphs 0013-0034).
In regards to claims 5 and 7, Shahana teach all intervening claim limitations as shown above. Shahana further teach (Figures 1-7), the bolt (nut member 39) including internal threads (female threaded portion 39a in the tubular shank 39b) that are configured to engage external threads (male threaded portion of the hub axle 29a) on a rear wheel axle (hub axle 29a of the rear hub 29) of the bicycle (bicycle 1); and the gear changer (rear derailleur 27 of the rear external gearshift device 12) being is a rear derailleur (as clearly illustrated in figures 1-2).
In regards to claim 8, Shahana teach (Figures 1-7) a bicycle rear derailleur assembly (rear external gearshift device 12) comprising: a rear derailleur (rear derailleur 27) including a base member (second base member body 32), a movable member (movable member 34) having a cage assembly (chain guide 33) attached thereto, and a linkage (link mechanism 35) that couples the movable member (movable member 34) to the base member (second base member body 32) in a manner which operatively permit movement of the movable member (movable member 34) relative to the base member (second base member body 32); and a mounting set (first base member body 31) configured to mount the bicycle rear derailleur assembly (rear external gearshift device 12) to a bicycle frame (rear dropout portion 30 of the frame body 2) of a bicycle (bicycle 1); the mounting set (first base member body 31) including a hanger (first bracket body 40) that has a first hanger opening (through-hole 40c) located at a first portion (first upper mounting portion 40a) of the hanger (first bracket body 40) and a second hanger opening (screw hole 40f) located at a second portion (first lower mounting portion 40b) of the hanger (first bracket body 40), a reinforcing element (second bracket body 41) that has a first reinforcing opening (through-hole 41c) and a second reinforcing opening (through-hole 41e), a sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) that is attached (via the matting insertion of the positioning projection 40e into the positioning recess 41d, and by coupling the nut member 39 with the hub axle 29a) to the first portion (first upper mounting portion 40a) of the hanger (first bracket body 40), and a bolt (nut member 39) that is configured to be inserted through the first reinforcing opening (through-hole 41c); the hanger (first bracket body 40) and the reinforcing element (second bracket body 41) being separate components (as cleanly illustrated in figures 3-4); wherein the second hanger opening (screw hole 40f) and the second reinforcing opening (through-hole 41e) are configured to connect the base member (second base member body 32) to the mounting set (first base member body 31), while the bolt (nut member 39) is configured to engage the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) for connecting the mounting set (first base member body 31) to the bicycle frame (rear dropout portion 30 of the frame body 2) (i.e. based on the entire disclosure of Shahana: when the nut member 39 is inserted through the through-hole 41c in the second bracket body 41, said nut member 39 contact/engage the inner peripheral surface of the axially-extending cylindrical nut mounting member 46 that defines said through-hole 41c; and the female threaded portion 39a on nut member 39 is configured to be screwed onto the male threaded portion 29b on the hub axle 29a of the rear hub 29 of the rear wheel 5r; where the hub axle 29a of the rear hub 29 is disposed/received within the mounting slot 30a of the rear dropout portion 30 of the frame body 2. Therefore, the nut member 39 does engage/contact the inner peripheral surface of the axially-extending cylindrical nut mounting member 46, and said nut member 39 can indirectly connect the first base member body 31 to the rear dropout portion 30 of the frame body 2 via the hub axle 29a of the rear hub 29) (see also paragraphs 0013-0034).
In regards to claims 11-14, Shahana teach all intervening claim limitations as shown above. Shahana further teach (Figures 1-7), the bolt (nut member 39) having internal threads (female threaded portion 39a in the tubular shank 39b) that are configured to engage external threads (male threaded portion of the hub axle 29a) on a rear wheel axle (hub axle 29a of the rear hub 29) of the bicycle (bicycle 1); the bicycle rear derailleur assembly (rear external gearshift device 12) additionally comprising a b-pin (mounting shaft 50) that is configured to connect the base member (second base member body 32) of the rear derailleur (rear derailleur 27) to the mounting set (first base member body 31); and the b-pin (mounting shaft 50) configured to be inserted through the second reinforcing opening (through-hole 41e) of the reinforcing element (second bracket body 41) and pass through a passage (tubular boss portion 32a) of the base member (second base member body 32) before being secured at the second hanger opening (screw hole 40f) of the hanger (first bracket body 40); wherein the second hanger opening (screw hole 40f) includes female threads (internal threads formed within the screw hole 40f), while the b-pin (mounting shaft 50) includes male threads (threaded portion 50b) that are configured to engage the female threads of the second hanger opening (internal threads formed within the screw hole 40f) so as to secure the rear derailleur (rear derailleur 27) to the mounting set (first base member body 31).
In regards to claim 15, Shahana teach (Figures 1-7) a mounting set (first base member body 31 of the rear external gearshift device 12) configured to mount a gear changer (rear derailleur 27 of the rear external gearshift device 12) to a bicycle frame (rear dropout portion 30 of the frame body 2) of a bicycle (bicycle 1), the mounting set (first base member body 31) comprising: a hanger (first bracket body 40) having a first hanger opening (through-hole 40c) located at a first portion (first upper mounting portion 40a) of the hanger (first bracket body 40), and a second hanger opening (screw hole 40f) located at a second portion (first lower mounting portion 40b) of the hanger (first bracket body 40); a reinforcing element (second bracket body 41) having a first reinforcing opening (through-hole 41c) and a second reinforcing opening (through-hole 41e); and a bolt (nut member 39) configured to be inserted through the first reinforcing opening (through-hole 41c); the hanger (first bracket body 40) and the reinforcing element (second bracket body 41) being separate components (as cleanly illustrated in figures 3-4); wherein the second hanger opening (screw hole 40f) and the second reinforcing opening (through-hole 41e) are configured to connect the gear changer (rear derailleur 27) to the mounting set (first base member body 31), while the bolt (nut member 39) is configured to connect the mounting set (first base member body 31) to the bicycle frame (rear dropout portion 30 of the frame body 2) (i.e. based on the entire disclosure of Shahana: the female threaded portion 39a on nut member 39 is configured to be screwed onto the male threaded portion 29b on the hub axle 29a of the rear hub 29 of the rear wheel 5r; and the hub axle 29a of the rear hub 29 is disposed/received within the mounting slot 30a of the rear dropout portion 30 of the frame body 2. Therefore, the nut member 39 can indirectly connect the first base member body 31 to the rear dropout portion 30 of the frame body 2 via the hub axle 29a of the rear hub 29) (see also paragraphs 0013-0034).
In regards to claim 16, Shahana teach all intervening claim limitations as shown above. Shahana further teach (Figures 1-7), the mounting set (first base member body 31 of the rear external gearshift device 12) additionally comprising a sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) that is attached (via the matting insertion of the positioning projection 40e into the positioning recess 41d, and by coupling the nut member 39 with the hub axle 29a) to the first portion (first upper mounting portion 40a) of the hanger (first bracket body 40); wherein the bolt (nut member 39) is configure to engage the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) (as clearly illustrate in figure 4, when the nut member 39 is inserted through the through-hole 41c in the second bracket body 41, said nut member 39 contacts/engages the inner peripheral surface of the axially-extending cylindrical nut mounting member 46 that defines said through-hole 41c).
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.
Claims 1-3, 5, 7, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Braedt (European Patent Application/Publication EP3388324 A2).
In regards to claim 1, Braedt teach (Figures 1-9b) a mounting set (base element 20 of the rear derailleur 10) configured to mount a gear changer (pivoting mechanism 30, the movable member 40, and the chain guide assembly 50 of the rear derailleur 10) to a bicycle frame (bicycle frame 1) of a bicycle, the mounting set (base element 20 of the rear derailleur 10) comprising: a hanger (first arm 22a) having a first hanger opening (first centering opening 23a) located at a first portion of the hanger (first connecting end 21 of the first arm 22a), and a second hanger opening (first receptacle 29a) located at a second portion of the hanger (second connecting end 29 of the first arm 22a); a reinforcing element (second arm 22b) having a first reinforcing opening (second centering opening 23b) and a second reinforcing opening (second receptacle 29b); a sleeve (nut 66 of the adapter 60) being attached (via the stops 68a/68b on the nut 66 and the pins 24a/24b on the base member 20) to the first portion of the hanger (first connecting end 21 of the first arm 22a); and a bolt (bolt 61 of the adapter 60) configured to be inserted through the first reinforcing opening (second centering opening 23b); wherein the second hanger opening (first receptacle 29a) and the second reinforcing opening (second receptacle 29b) are configured to connect the gear changer (pivoting mechanism 30, the movable member 40, and the chain guide assembly 50 of the rear derailleur 10) to the mounting set (base element 20 of the rear derailleur 10), while the bolt (bolt 61) is configured to engage the sleeve (nut 66) for connecting the mounting set (base element 20 of the rear derailleur 10) to the bicycle frame (bicycle frame 1) (see also paragraphs 0077-0089 and 00127 in the translated EP3388324 A2 provided with this office action). Yet, Braedt does not explicitly reveal, the hanger (first arm 22a) and the reinforcing element (second arm 22b) being formed as separate components.
However, it would have been an obvious design choice for one of ordinary skill in the art before the effective filing date of the claimed invention to construct the hanger and the reinforcing element of Braedt’s mounting set, as two-separate components instead of a one-piece unitary structure. Such a modification (i.e. forming the hanger and the reinforcing element as separate or separable components) would ease and simplify the proper positioning, arrangement, assembly, and/or placement of the hanger and the reinforcing element of the mounting set at the respective sides of the bicycle frame, when said mounting set is being connected to said bicycle frame. Furthermore, based on the legal precedent set by In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961), making the hanger and the reinforcing element in Braedt’s mounting set separable would be reasonable and obvious alterations for the motives stated above (see also MPEP 2144.04(V)(C)).
In regards to claims 2-3, Braedt teach all intervening claim limitations as shown above. Braedt further teach (Figures 1-9b), the sleeve (nut 66) configured to be inserted into an opening (frame opening 2b) of the bicycle frame (bicycle frame 1) from an inside surface of the bicycle frame (inner side surface of the right-side rear dropout of the bicycle frame 1, which faces towards the rear hub 3); and the bolt (bolt 61) configured to be inserted into the opening (frame opening 2b) of the bicycle frame (bicycle frame 1) from an outside surface of the bicycle frame (exterior side surface of the right-side rear dropout of the bicycle frame 1, which faces away from the rear hub 3), thereby bringing the sleeve (nut 66) and the bolt (bolt 61) into a retaining engagement (i.e. formed via the external threads 64 of the bolt 61 and the internal threads 67 of the nut 66).
In regards to claims 5 and 7, Braedt teach all intervening claim limitations as shown above. Braedt further teach (Figures 1-9b), the bolt (bolt 61) including internal threads (internal threads 65) that are configured to engage external threads (external threads 73/83/93) of a rear wheel axle (plug-in shaft/thru-axle 7/70/80/90) of the bicycle; and the gear changer (rear derailleur 10) being a rear derailleur (as clearly illustrated in figures 1-3).
In regards to claim 15, Braedt teach (Figures 1-9b) a mounting set (base element 20 of the rear derailleur 10) configured to mount a gear changer (pivoting mechanism 30, the movable member 40, and the chain guide assembly 50 of the rear derailleur 10) to a bicycle frame (bicycle frame 1) of a bicycle, the mounting set (base element 20 of the rear derailleur 10) comprising: a hanger (first arm 22a) having a first hanger opening (first centering opening 23a) located at a first portion of the hanger (first connecting end 21 of the first arm 22a), and a second hanger opening (first receptacle 29a) located at a second portion of the hanger (second connecting end 29 of the first arm 22a); a reinforcing element (second arm 22b) having a first reinforcing opening (second centering opening 23b) and a second reinforcing opening (second receptacle 29b); and a bolt (bolt 61 of the adapter 60) configured to be inserted through the first reinforcing opening (second centering opening 23b); wherein the second hanger opening (first receptacle 29a) and the second reinforcing opening (second receptacle 29b) are configured to connect the gear changer (pivoting mechanism 30, the movable member 40, and the chain guide assembly 50 of the rear derailleur 10) to the mounting set (base element 20 of the rear derailleur 10), while the bolt (bolt 61) is configured to connect the mounting set (base element 20 of the rear derailleur 10) to the bicycle frame (bicycle frame 1) (see also paragraphs 0077-0089 and 00127 in the translated EP3388324 A2 provided with this office action). Yet, Braedt does not explicitly reveal, the hanger (first arm 22a) and the reinforcing element (second arm 22b) being formed as separate components.
Nevertheless, it would have been an obvious design choice for one of ordinary skill in the art before the effective filing date of the claimed invention to construct the hanger and the reinforcing element of Braedt’s mounting set, as two-separate components instead of a one-piece unitary structure. Such a modification (i.e. forming the hanger and the reinforcing element as separate or separable components) would ease and simplify the proper positioning, arrangement, assembly, and/or placement of the hanger and the reinforcing element of the mounting set at the respective sides of the bicycle frame, when said mounting set is being connected to said bicycle frame. Furthermore, based on the legal precedent set by In re Dulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961), making the hanger and the reinforcing element in Braedt’s mounting set separable would be reasonable and obvious alterations for the motives stated above (see also MPEP 2144.04(V)(C)).
In regards to claim 16, Braedt teach all intervening claim limitations as shown above. Braedt further teach (Figures 1-9b), the mounting set (base element 20 of the rear derailleur 10) additionally comprising a sleeve (nut 66 of the adapter 60) that is attached (via the stops 68a/68b on the nut 66 and the pins 24a/24b on the base member 20) to the first portion of the hanger (first connecting end 21 of the first arm 22a); wherein the bolt (bolt 61) is configured to engage the sleeve (nut 66).
Allowable Subject Matter
Claim 4 and 9-10 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, for the following reasons:
In regards to claim 4, Braedt teach all intervening claim limitations as shown above. Yet, Braedt does not teach, the retaining engagement (i.e. formed via the external threads 64 of the bolt 61 and the internal threads 67 of the nut 66) between the sleeve (nut 66) and the blot (bolt 61) of the mounting set (base element 20) being a positive snap connection formed by an O-ring. On the contrary, said retaining engagement is formed a threaded connection formed by the internal threads of said sleeve (internal threads 67 of the nut 66) and the external threads of said bolt (external threads 64 of the bolt 61). Furthermore, Shahana also fail to propose, the sleeve of the mounting set being inserted into an opening of the bicycle frame from an inside surface of the bicycle frame (as required by parent claim 2), the bolt of said mounting set being inserted into the opening of the bicycle frame from an outside surface of the bicycle frame (as required by parent claim 3), and the sleeve and the bolt being coupled together via a positive snap connection that uses O-ring (as required by claim 3). Additionally, all other prior art of record, either individually or in combination, neither disclose nor render obvious, a mounting set comprising a hanger, a reinforcing element, a sleeve, a bolt, and an O-ring, all having the specific cooperative structure and being arranged in the exact manner recited collectively within claims 1-4. Accordingly, claim 4 limitations appear to contain allowable subject matter over the cited prior art references; specially when said limitations are viewed in light of applicant’s specification, and when they are considered together with the superseding limitations in parent claims 1-3.
In regards to claim 9, Shahana teach all intervening claim limitations as shown above. Yet, Shahana does not teach, the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) configured to be inserted into an opening (mounting slot 30a) of the bicycle frame (rear dropout portion 30 of the frame body 2) from an inside surface of the bicycle frame (internal side surface of the rear dropout portion 30 of the frame body 2, which faces towards the rear wheel 5r, gear cluster 28, and the rear hub 29). Instead, the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) in Shahana’s mounting set (first base member body 31) is always positioned externally from an outside surface of the bicycle frame (exterior side surface of the rear dropout portion 30 of the frame body 2, which faces away from the rear wheel 5r, gear cluster 28, and the rear hub 29), and said sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) cannot be inserted into any openings (mounting slot 30a/screw hole 30b) defined in the bicycle frame (rear dropout portion 30 of the frame body 2). In addition, Braedt fails to propose, a bicycle rear derailleur assembly comprising a rear derailleur that includes base member and a sperate mounting set for attaching said base member to a bicycle frame, as required by parent claim 8. Conversely, the hanger (which has the first hanger opening and the second hanger opening), the reinforcing element (which has the first reinforcing opening and the second reinforcing opening), the sleeve, and the bolt in the Braedt’s bicycle rear derailleur assembly, are all components/parts/features that are provided to the base member of the rear derailleur which also serves as the mounting set that attaches said rear derailleur to the bicycle frame; in other words, the base member and the mounting set in the bicycle rear derailleur assembly taught by Braedt are one unique component, as opposed to being two distinct components. Resultingly, Braedt cannot possibly teach or suggest any of the structure recited within the depend claims 9-14. Furthermore, all other prior art of record, either individually or in combination, neither disclose nor render obvious, a bicycle rear derailleur assembly having the specific cooperative structural arrangement described collectively by claims 8-9. Consequently, claim 9 limitations appear to contain allowable subject matter over the cited prior art references; specially when said limitations are viewed in light of applicant’s specification, and when they are considered along with the superseding limitations in parent claim 8.
Claim 10 depends from claim 9. Subsequently, claims 10 also include the above noted allowable subject matter in parent claim 9.
Response to Arguments
With respect to applicant’s arguments in page 9 (section-II) of the remarks filed on 06/08/2026, regarding the previously set forth drawing and claim objections, all have been fully considered and are persuasive. Resultingly, said objections to the drawings and claims have been withdrawn.
With respect to applicant’s arguments in pages 9-11 (section-III) of the remarks filed on 06/08/2026, regarding the previously set forth 35 U.S.C. 102(a)(1) rejections for claims 1, 8, and 15, in view of Shahana, all have been fully considered but they are not persuasive for the following reasons:
It’s the applicant’s position that Shahana does cannot propose a mounting set as recited within claims 1, 8, or 15, because Shahana fails to disclosed the mounting set (first base member body 31 of the rear external gearshift device 12) being connected to the bicycle frame (rear dropout portion 30 of the frame body) due to the bolt (nut member 39) in said mounding set engaging the sleeve (axially-extending cylindrical nut mounting member 46 formed on the second upper mounting portion 41a) in said mounting set. In response, examiner respectfully disagrees with this assertion. As explained above, when Shahana’s mounting set (first base member body 31 of the rear external gearshift device 12) is coupled to the bicycle frame (rear dropout portion 30 of the frame body 2), the bolt (nut member 39) is inserted through the first hanger opening (through-hole 41c) in the hanger (second bracket body 41), such that said bolt contacts/engages with the inner peripheral surface of the sleeve (axially-extending cylindrical nut mounting member 46) which defines said first hanger opening. Additionally, Shahana also teach, the bolt (nut member 39) being configured to be screwed onto (via the female threaded portion 39a and the male threaded portion 29b) the hub axle (hub axle 29a) of the bicycle real wheel hub (rear hub 29 of the rear wheel 5r); where the hub axle of the bicycle rear wheel hub is disposed/received within the opening (mounting slot 30a) in the bicycle frame (rear dropout portion 30 of the frame body), thereby coupling said hub axle to said bicycle frame. Thus, the bolt in the mounting set taught by Shahana does engage (e.g. contact) the inner peripheral surface of the sleeve in said mounting set, and the nut member at least indirectly connect (e.g. via the hub axle of the bicycle rear wheel hub) said mounting set to the bicycle frame. Accordingly, Shahana still appears to anticipate all limitations in amended claims 1, 8, and 15.
With respect to applicant’s arguments in page 11 (section-III) of the remarks filed on 06/08/2026, regarding the previously set forth 35 U.S.C. 102(a)(1) rejections for claims 1 and 15, in view of Braedt, all have been fully considered and are persuasive. Therefore, the 35 U.S.C. 102(a)(1) rejection has been withdrawn. However, upon further consideration, new grounds of rejections are made for claim 1 and 15 under 35 U.S.C. 103, based on the teachings Braedt as explained above.
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.
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/R.J.D./Examiner, Art Unit 3654
/Victoria P Augustine/ Supervisory Patent Examiner, Art Unit 3654
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