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 .
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 3-7, 11, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-5, 7, and 11 of U.S. Patent No. 12,187,370. Although the claims at issue are not identical, they are not patentably distinct from each other because they claim the same elements with slightly different wording.
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.
(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 1-2, 8-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hagemann et al. EP 3789283.
Hagemann et al. discloses a bicycle transportation apparatus, comprising:
a spacer 2, the spacer having an outer body 4 and an adjustable member 6 that is
positionable within an inner passageway of the outer body to different locations so a length of
the spacer is adjustable; and
the spacer being positionable for attachment to a frame of a bicycle;
wherein the adjustable member has a projection 10 and the outer body has a plurality of
grooves 8 positioned adjacent the inner passageway, each of the grooves being in communication
with the inner passageway; and the projection sized and configured to be matingly received
within any of the grooves while a portion of the adjustable member is within the inner passageway;
wherein the outer body is comprised of a polymeric material and the adjustable member
is comprised of a polymeric material; (see paragraph [0018] “The spacer and in particular the at least two elements are preferably made from a plastic that can be injection molded, for example a polyamide, in particular PA66”)
comprising: a bike frame having spaced part front forks 30, the spacer being attached
between the front forks.
Claim(s) 13, 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hagemann
et al. EP 3789283.
Hagermann discloses a bicycle transportation spacer comprising:
an outer body 4 having first end and a second end opposite the first end, the outer body
having an inner passageway that extends from the second end and a plurality of spaced grooves 8
positioned around the inner passageway, each of the grooves being in communication with the
inner passageway; and
an adjustable member 6 that is positionable within the inner passageway of the outer
body to different locations so a length of the spacer is adjustable, the adjustable member having a
projection 10 sized and configured to be matingly received within any of the grooves while a
portion of the adjustable member is within the inner passageway;
wherein each of the grooves is sized so that the adjustable member is in a selectable predefined position within the outer body when the projection is positioned within an entire length of the groove to define a length of the spacer for attachment to a frame of a bicycle.
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.
6. Claim(s) 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hagermann
et al. ‘283 in view of Mondi AG DE 20 2020 104 051.
Hagermann discloses A method of transporting a bicycle, comprising:
providing at least one spacer 2 for attachment to a frame of a bicycle, the spacer having
an outer body 4 and an adjustable member 6 that is positionable within an inner passageway of
the outer body to different locations so a length of the spacer is adjustable;
attaching the at least one spacer to the frame 30, adjusting a length of the at least one spacer via movement of the adjustable member to a pre-selected location within the inner passageway before attaching the at least one spacer to the frame;
wherein the adjusting of the length of the spacer comprises: positioning a projection 10 of
the adjustable member within a groove 8 of the outer body and sliding the adjustable member
within the inner passageway until the projection is within an entire length of the groove, the
groove being in communication with the inner passageway.
Hagermann et al. fails to disclose positioning the frame having the at least one spacer attached thereto in a box for shipment of the bicycle.
However Hagermann et al. discloses that the spacer is to be used when transporting a
bicycle with the front wheel removed.
Mondi AG discloses the use of a box 12 used to protect a bicycle 28 having its front
wheel removed for use during transport.
Therefore it would have been obvious to one having ordinary skill in the art before the
effective filing date of the claimed invention, with a reasonable expectation of success, to ship
the bicycle disclosed by Hagermann et al. in a box, in order to protect the bicycle during
transport.
Allowable Subject Matter
Claims 10, 12, 16, and 20 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Hurley whose telephone number is (571)272-6646. The examiner can normally be reached Monday-Thursday 9 am-5:30 pm Kevin.Hurley@USPTO.GOV.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at 571-272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KEVIN HURLEY/
Primary Examiner
Art Unit 3611
August 8, 2026
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