DETAILED ACTION
Claim Objections
Claim 1 is objected to because of the following informalities: It is suggested to add the limitation “longitudinal axis” between the words “the” and “elongate” in the last line of the claim to clarify what “sides” the respective portions are opposite relative to. Appropriate correction is required.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the hook portion oriented orthogonally to the longitudinal axis of the body, and extending towards the second end of the body (claim 1) and the second hook being orthogonal to the longitudinal axis of the elongate body (claim 9) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. See additional discussion under 35 U.S.C. 112 below.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, as well as claims 2-11 depending therefrom (claims 10 and 11 being independent form but referring to the structure of claim 1), and claim 8 are 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 claim 1:
The limitation that the hook portion is oriented orthogonally to the longitudinal axis of the body, and extending towards the second end of the body appear to contradict one another because a direction orthogonal to the longitudinal axis will extend directly away from the longitudinal axis, and not towards either end of the body. As best understood by the examiner, the limitation is considered to be intended to define that the hook portion has a hook body that extends generally orthogonal to the longitudinal axis of the body and a hook tip that extends toward the second end of the body, and will be treated as such for the sake of the current Office Action.
NOTE: With the above clarifying limitation, the elongate protrusion will similarly be considered to extend from the hook body.
Additionally, the tyre-engagement portion appears to form a side of the hook portion, but is claimed as a separate component. As best understood by the examiner, the limitation is considered to be intended to define that a side of the hook portion (or hook body if amended as interpreted above) defines a tyre-engaging portion at the first end of the elongate body, and will be treated as such for the sake of the current Office Action.
Regarding claim 9, the second hook (3’) is shown in Figs. 7-8 to effectively be an extension of the elongate body, substantially aligned with he longitudinal axis of the elongate body. The only structure that could be interpreted to be orthogonal to the longitudinal axis of the elongate body would be the outermost leading edge of the second hook (extending along the width of the hook), and the limitation will be treated as such for the sake of the current Office Action.
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 (i.e., changing from AIA to pre-AIA ) 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.
Claims 1, 6-8, 12 and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nelson (9,016,170).
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Regarding claim 1, Nelson discloses a tool for fitting and removing a cycle tire on a wheel comprising an elongate body (102) forming a handle for the tool, the elongate body having a longitudinal axis (106 or parallel thereto), a first surface and a second opposing surface, wherein both the first and second surfaces extend between a first end and a second end of the elongate body; a hook portion (shown in box portion here) at the first end of the elongate body, the hook portion being orientated orthogonally to the longitudinal axis (having two portions 122 and 124, both extending orthogonally relative to the longitudinal axis) with a hook tip (152) extending towards the second end of the elongate body and wherein the hook portion comprises an elongate protrusion (124) extending in a direction opposite the second end of the elongate body; a tire-engagement portion (face A) at the first end of the elongate body, the tire-engagement portion having a substantially flat surface (as seen in Figs. 1-2) and a major plane which is substantially perpendicular to the longitudinal axis of the elongate body (the major plane being substantially perpendicular to the longitudinal axis, in a similar manner to the applicant’s disclosed invention) and a longitudinal axis of the elongate protrusion of the hook portion (extending into the plane of the paper, as viewed here from Fig. 3), and a channel (between 142 and 144) formed in the elongate body at the first end of the elongate body, the channel comprising a lip (either of 142 or 144) that is substantially parallel to the longitudinal axis of the elongate protrusion of the hook portion (also having longitudinal axes extending into the paper, as viewed here from Fig. 3); wherein the hook portion extends from the first surface of the elongate body and the channel is formed in the second opposing surface of the elongate body such that the hook portion and the channel are disposed on opposite sides of the longitudinal axis of the (see objection above) elongate body.
Regarding claim 6, Nelson further discloses that the elongate body comprises an aperture (shown in the second end of the handle).
Regarding claim 7, Nelson further discloses that the elongate body comprises a plurality of structural support elements (shown within the channel, as viewed in Fig. 1).
Regarding claim 8, Nelson further discloses that the elongate body is generally planar in form (linear second surface of the handle is generally planar and/or the internal portion of the body connecting the first and second opposing surfaces; note: the elongate body of the current application is clearly shown to have a curvature, which allows for substantial variation from the planar to read on the claimed “generally planar”).
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Regarding claim 12, the structure of Nelson is further capable of being used with the elongate protrusion (124) arranged to sit, in use during removal of the tire from the wheel rim, on top of a side wall of the wheel rim (as shown here) to thereby keep the tool in place during removal of the tire from the wheel rim.
Regarding claim 13, Nelson further discloses that the channel is U-shaped (in the same squared off U-shape manner as the current invention).
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.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Nelson (9,016,170).
Regarding claim 9, Nelson fails to discloses a second hook portion at the second end of the elongate body. Clark discloses a very similar tool to Nelson, intended for the same purposes, and teaches that the second end of the handle may include a second hook (22) to provide the additional function of opening paint can-type lids (Fig. 4). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide a similar second hook to the handle of Nelson, as taught by Clark for opening other types of containers, wherein the second hook is orthogonal to the longitudinal axis of the elongate body (outermost edge of hook being orthogonal to the longitudinal axis of the body in the same manner as the applicant’s claimed invention).
Response to Arguments
Applicant’s arguments, see Remarks, filed 28 May 2026, with respect to the objections to drawings, rejections of claims 1-12 under 35 U.S.C. 112 and 102 have been fully considered and are persuasive. Therefore, the objections and rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection are made under 35 U.S.C. 112 and 35 U.S.C. 102, as well as new objections to the drawings, as discussed above.
The examiner notes that the structure of Clark is substantially different than the disclosed overall structure of the current invention. However, as discussed above, Clark does read on all pending limitations (obvious for claim 9), such that it is suggested that the applicant needs to further clarify the specific structure to overcome the general prior art.
Note from previous Office Action: The objection to the drawings is only withdrawn in view of the applicant’s very broad interpretation to the claimed phrase “orthogonal to the longitudinal axis”, to include “or substantially at a 90 degree angle” while being shown by the applicant (in Remarks filed 8 December 20205) to vary substantially from 90 degrees, and will be equally broadly interpreted as it relates to the prior art reading on the claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Each of Banchitta et al. (D945,843) and Liu (D 304,899), Link et al. (6,578,223), Schifferly (4,403,640), Strang et al. (3,247,883), Craft (3,717,193), Johnson (1,122,599), and Trotter (3,918,509) disclose other tools having similar structure and function as the applicant’s claimed invention.
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 BRYAN R MULLER whose telephone number is (571)272-4489. The examiner can normally be reached M-F 8am-5pm.
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, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN R MULLER/Primary Examiner, Art Unit 3723 17 August 2026
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