DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Interpretation
Regarding claims 1-20, the following interpretation is made. Claims 1-4, 8-11, 13-14, -17-18 are not interpreted as positively claiming the bicycle or any bicycle parts; claims 5, 6, 7, 12, 19, 21, and 22 are interpreted as requiring the bicycle and/or wheel.
Because the claims 1-4, 8-11, 13-14, -17-18 do not positively recite the bicycle or bicycle parts, they amount to requiring structure that can be used in the claimed manner.
The "manner of operating the device does not differentiate apparatus from the prior art" And “apparatus claims cover what a device is, not what a device does” MPEP 2114. Absent distinguishing structure, a mere functional limitation is not sufficient to define over the prior art.
Claim Rejections - 35 USC § 112
Claims 1-15, 17-19, 21 and 22, 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 1, 8, 13, the new limitation, “configured to shield both an axle of the wheel and a rotational axle axis of the wheel along a side of the wheel” is indefinite. An axle axis, as seen at 95 in fig. 3 of the instant invention, is a geometric concept not a structure. The axis of the axle as seen in fig. 3 extends past the axle itself, an axis extends infinitely.
With this in mind, it is not clear how applicant’s cover covers the rotational axis of the wheel if, as seen in fig. 3, the axis extends through and out of the cover. Applicant might consider amending the claims to recite the structural qualities of the cover rather than intended use of the structure in order to further prosecution.
Claim Rejections - 35 USC § 102
(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) 8, 9, 12 are rejected under 35 U.S.C. 35 U.S.C. 102(a)(1) as being anticipated by Flemons (US 6508484).
In light of compact prosecution, in the event applicant were to amend the claims to recite a structural element of the cover that protects or covers an end of an axle, such as the cover being free of holes or something similar, the following rejection is applied:
Regarding claim 8, Flemons discloses a protector 1 for a bicycle, fig. 2, that covers a wheel and an axle, thereby protecting the axle, the protector comprising:
a body portion 20 (the half to the left of section 22, fig. 1,that covers and shields an axle of the wheel and an end of the axle through which the rotational axle axis passes, fig. 2, and a tab 7b and 7b’ extending from the body portion and fully capable of being tied to the wheel, fig. 2, to couple the protector to the wheel; and
a second body portion 20 (half to the right of section 22 in fig. 1) that covers and shields an axle of the wheel and an end of the axle through which the rotational axle axis passes, along a second opposite side of the wheel, fig. 2, and a second tab extending from the second body portion, the second tab, 7c and 7c’ configured to engage the wheel to couple the second axle protector to the wheel, col. 3: 24-35.
Regarding claim 9, the tabs of Flemons are fully capable engaging spokes of a wheel when the protector is coupled to the wheels, fig. 2.
Regarding claim 12, Flemons discloses that the first and second axle protectors are coupled to the front wheel, fig. 2.
Claim(s) 13 and 15 are rejected under 35 U.S.C. 35 U.S.C. 102(a)(1) as being anticipated by Meyer (US 1821354).
In light of compact prosecution, in the event applicant were to amend the claims to recite a structural element of the cover that protects or covers an end of an axle, such as the cover being free of holes or something similar, the following rejection is applied:
Regarding claims 13 and 15, Meyer discloses a protector, capable of being used for a wheel of a bicycle, the protector comprising: a body portion 6 fully capable of covering and shielding both an axle of the wheel and a rotational axis of a wheel along a side of the wheel; and
a first and second T-shaped tab 8 extending from the body portion, the tab capable of engaging a first spoke of a wheel and a second spoke of a wheel such that the protector is capable of securing the protector to a wheel.
Claim(s) 8-11, 13, 15, 17-18, are rejected under 35 U.S.C. 35 U.S.C. 102(a)(1) as being anticipated by Woods (US 8882017).
Regarding claim 8, Woods discloses a device for an annular article (reel) capable of being used to protect an axle assembly for a wheel of a bicycle, device comprising:
a first body portion (central portion 120) fully capable of covering and shield an axle of a wheel along a first side of the wheel, and a first tab at 140 and 144, fig. 5, extending from the first body portion, the first tab fully capable of engaging a wheel to couple the device first to a wheel; and
a second device including a second body portion (central portion 122) fully capable of covering and shielding an axle of a wheel along a second, opposite side of the wheel, and a second tab at 142 and 146, extending from the second body portion, the second tab fully capable of engaging a wheel to couple the device to a wheel.
The "manner of operating the device does not differentiate apparatus from the prior art" And “apparatus claims cover what a device is, not what a device does” MPEP 2114. Absent distinguishing structure, a mere functional limitation is not sufficient to define over the prior art.
Regarding claims 9, 10, 13, each of the tabs of Woods are T-shaped, fig. 5, and if so desired, can be used to engage spokes of a wheel.
The "manner of operating the device does not differentiate apparatus from the prior art" And “apparatus claims cover what a device is, not what a device does” MPEP 2114. Absent distinguishing structure, a mere functional limitation is not sufficient to define over the prior art.
Regarding claims 11 and 17, Woods discloses that each tab includes a stem (at 140 and 142) and a strip (at 144 and 146), fig. 5, coupled to the stem, and wherein a junction point between the stem and the strip defines a V-shaped recess, not numbered, see fig. 2 and 5 of Woods and annotated figures of Woods.
Regarding claim 15, Woods further discloses that multiple T-shaped tabs extend from each body portion, including a second tab, fig. 5.
Regarding claim 18, Wood discloses each tab includes two V-shaped recesses at the intersection between the strip and the stem. The recess of the tabs of Woods are fully capable of being used to connect the sides of the strip to two spokes of a wheel that have a corresponding size to the device taught by Woods.
Claim(s) 8-10, 12, 13, 15, 18, 19, 21, and 22, are rejected under 35 U.S.C. 35 U.S.C. 102(a)(1) as being anticipated by Osterlund et al. (US 6942302).
Regarding claims 8, 10, 13, 15, 19, Osterlund discloses a wheel cover 18 and a wheel 10, that, as seen in fig. 1, protects at least inner portions of an axle at 15 of a bicycle wheel and the cover is coupled to the wheel, in addition, the embodiment seen in fig. 5 of Osterlund completely covers even the ends of the axle.
The wheel cover comprises a body portion configured to cover and shield an axle (inner portions of an axle) and at least an inner portion of the rotational axle axis of the wheel that is in the same area as the axle protected and covered of the wheel along a side of the wheel; and
a first and second T-shaped tab at 17, fig. 4, as seen in fig. 4, the flat portion of the tab fastener is t-shaped, extending from the body portion, the tab configured to engage a first spoke of the wheel and a second spoke of the wheel to couple the axle protector to the wheel, col. 2: 50-60. Fig. 1 shows two tabs, one near the top and one near the bottom of each cover.
Osterlund also teaches a second cover 18’ having the same configuration and coupled to an opposite side of the wheel, fig. 1.
Regarding claim 9, Osterlund further discloses, fig. 3, the first tab is configured to engage a first spoke of the wheel when the first axle protector is coupled to the wheel, and wherein the second tab is configured to engage a second spoke of the wheel when the second axle protector is coupled to the wheel.
Regarding claim 12, Osterlund discloses, fig. 3, a bicycle with a first axle protector 18 and a second axle protector 18’ each coupled to a front wheel, col. 2: 50-65.
Regarding claims 18, 21 22, the tab disclosed by Osterlund includes multiple recesses between projections at 21. Each of the first and second T-shaped tab is engaged with spokes via recesses between protuberances 21. Each recess is engaged with different spokes of a wheel to couple the axle protector to the wheel, col. 2: 50-60. See annotated fig. 3 of Osterlund.
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Claim Rejections - 35 USC § 103
Claim(s) 1, 6, are rejected under 35 U.S.C. 103 as being unpatentable over McNeill (US 6267237) in view of Yasuda (JP H07215389 A1).
Regarding claims 1, 6, McNeill discloses a bicycle packaging system for a bicycle 1, the packaging system 10, fig. 5 comprising:
a protector 12 (packing disk), configured to be coupled to a front wheel 30 of a bicycle, fig. 3, via tabs (ties 18) extending from the body portion, fig. 2, col. 4:40-50. As seen in fig. 3, the protector 21 covers and shields and thereby protects an axle of the wheel and at least part of an axis central to the axle of the wheel. The tab of McNeill is shown as being tied around a wheel but is fully capable of being tied anywhere on the wheel including tied to a spoke of the wheel.
McNeill does not disclose any details of the packaging box 10.
Yasuda discloses a packaging system for a bicycle, the packaging system comprising:
a base tray 14, fig. 1 and 2;
as seen in fig. 1, a first vertical tower 17 coupled to the base tray;
a second vertical tower 17 coupled to the base tray. The vertical towers provide reinforcement for the box outer body, see description of Fig. 3, translation, page 3: “As shown in FIG. 3, reference numeral 17 denotes a reinforcing plate for reinforcing the body outer box 13 in the front-rear direction. The reinforcing plate 17 is a body outer box.”
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the generic outer box packaging 10 of McNeill with the packaging of Yasuda having a tray 14, an outer box 13, and two towers 17 in order to provide packaging that has increased reinforcement as per the teaching of Yasuda.
Claim(s) 2, 3, 4, are rejected under 35 U.S.C. 103 as being unpatentable over McNeill and Yasuda as applied to claims 1 and 6 above, and further in view of Marotz (DE 4237931 A1).
Regarding claims 2, 3, 4, the references applied above teach all of claims 1 and 6, as applied above.
The references applied above do not teach a tab with a stem and a strip coupled to the stem. The protector of McNeill is attached via separate ties.
Marotz teaches a packaging 1 with T-shaped tabs having a stem (vertical arm 13) and a strip 12 (transverse arm 12), the T-shaped tabs of Marotz are integral with a panel carrier sheet 1 and are folded to wrap around an elongated object 10 to secure the object to the panel carrier sheet, fig. 2 and 3.
As seen in fig. 4a, the stem and strip have a T-shape, in fig. 4e, the strip has a V-shaped recess at a junction point between the stem and the strip.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the fastening means (ties 18) of the protector disclosed by McNeill with the integral fastening tab having a stem and strip for securing an elongated object to a panel as taught by Marotz in order to provide a fastener that is integral with the protector and does not require additional separate fastening means.
Claim(s) 1, 2, 4, 5, 6, are rejected under 35 U.S.C. 103 as being unpatentable over Osterlund et al. (US 6942302) in view of Yasuda (JP H07215389 A1).
Regarding claims 1, 5, 6, Osterlund discloses a bicycle with a front wheel 10 and a wheel cover 18, that, as seen in fig. 5, protects at least inner portions of an axle at 15 of a bicycle wheel and the cover is coupled to the wheel, in addition, the embodiment seen in fig. 5 of Osterlund completely covers even the ends of the axle.
The wheel cover comprises a body portion configured to cover and shield an axle (inner portions of an axle) and at least an inner portion of the rotational axle axis of the wheel that is in the same area as the axle protected and covered of the wheel along a side of the wheel; and
a first and second T-shaped tab at 17, fig. 4, as seen in fig. 4, the flat portion of the tab fastener is t-shaped, extending from the body portion, the tab configured to engage a first spoke of the wheel and a second spoke of the wheel to couple the axle protector to the wheel, col. 2: 50-60. Fig. 1 shows two tabs, one near the top and one near the bottom of each cover.
Osterlund also teaches a second cover 18’ having the same configuration and coupled to an opposite side of the wheel, fig. 1. Osterlund further teaches that the covers provide protection for a rider, col. 1: 45- 55.
Osterlund does not disclose any packaging.
Yasuda discloses a packaging system for a bicycle, the packaging system comprising:
a base tray 14, fig. 1 and 2;
as seen in fig. 1, a first vertical tower 17 coupled to the base tray;
a second vertical tower 17 coupled to the base tray.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the protective accessorized covers of Osterlund with a bike and wheels within a packaging as taught by Yasuda in order to provide a means for shipping a bike with accessory covers to a consumer.
Regarding claims 2 and 4, Osterlund further teaches/discloses a first and second T-shaped tab at 17, fig. 4, as seen in fig. 4, the flat portion of the tab fastener is t-shaped, extending from the body portion, the tab configured to engage a first spoke of the wheel and a second spoke of the wheel to couple the axle protector to the wheel, col. 2: 50-60. Fig. 1 shows two tabs, one near the top and one near the bottom of each cover.
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Osterlund as applied to claim 13 above.
Regarding claim 14, the references applied above teach all of claim 13, as applied above. Oster does not teach that the body portion is oval. However, Osterlund does teach providing different aesthetic shapes, col. 3: 15-25. Applicant provides no specific reason for an oval shaped body portion, [0028] of the instant application.
With this in mind, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the shape of the body portion of Osterlund to be oval or any shape as an obvious matter of design choice resulting in the same result of providing some protection to the axle of a wheel.
Allowable Subject Matter
Claim 7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 7 positively recites the bike and rather than “configured to” language and positively recites the relationship between the spokes and the V-shaped recess. With this in mind, although prior art teaches the structure as claimed, the available prior art does not teach the relationship between the bike and the V-shaped recess of the tab.
Response to Arguments
Applicant's arguments filed 18 March 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that the prior art does not teach a device capable of protecting both an axle and an axle axis because each have a central axial aperture, as seen in fig. 3 of the instant application, the axis is a geometric concept and extends beyond the protective cover. With this in mind, applicant’s arguments against prior art that has a central axial aperture is not found persuasive. In addition, applicant recites the intended use of the protector, any of the devices of the prior art can be shifted such that a central aperture is not aligned with the axis or the end of the axle such that the end of the axle is covered.
Regarding Osterlund, the above rejection is modified to use the embodiment seen in fig. 5 of Osterlund that does not have a central aperture. With this in mind, the argument against Osterlund is moot.
In response to applicant's argument against Chen and Yasuda, the combination of Chen and Yasuda is not used in the rejection at hand.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOLLIE L IMPINK whose telephone number is (571)270-1705. The examiner can normally be reached Monday-Friday (7:30-3:30).
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, Anthony Stashick can be reached at (571) 272-4561. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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MOLLIE LLEWELLYN IMPINK
Primary Examiner
Art Unit 3799
/MOLLIE IMPINK/Primary Examiner, Art Unit 3799
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