DETAILED ACTION
Claim Objections
Claim 12 is objected to because of the following informalities: the second half of the claim is effectively previously presented in lines 11-13 of claim 1. Appropriate correction is required.
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), 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.
The term “first plane” as applied in lines 4 and 6-7 is unclear because the term is not defined in the claim, not recited in the original application as a whole, and does not have a common and/or clear definition in the art or in any manner that would clearly define the intent of the applicant (i.e. the claim does not relate the plane to any specific orientation relative to the claimed structure(s), in a manner to clearly define the plane), wherein the claimed plane could potentially be any plane that passes through any portion of the handle. As best understood by the examiner, the limitation is considered to be intended to define a plane along the longitudinal axis, and will be treated as such for the sake of the current Office Action.
NOTE: the use of “major plane” in line 12 is not considered to be unclear because the claim language clearly defines what plane is intended.
Additionally, the term “at a rear portion of the hook”, as added to the claim, is also unclear because there is no prior, or later, disclosure of any specific orientation relating to a front or rear portion of the device as a whole, the hook, or any other structure of the claimed invention, such that the term “rear” could be variable depending on the orientation of the device relative to a user and/or a wheel.
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, 6-9 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rainey (3,823,756).
Regarding claim 1, Rainey discloses a tool for fitting and removing a cycle tire on a wheel comprising an elongate body (12) forming a handle for the tool, the elongate body having a first end and a second end, a first plane and a longitudinal axis; a hook portion (entire head 10 may be considered to be the hook portion) at the first end of the elongate body, the hook portion being orientated orthogonally to the longitudinal axis (portions at a slight angle, but primarily extending orthogonally, in the same manner as the applicant’s disclosed hook 3) of the elongate body and extending out of the first plane (when the plane is oriented along the longitudinal axis substantially perpendicular to the hook) of the elongate body, engageable (being inherently capable), in use during removal of the tire from the wheel rim, with an inner side wall of the tire to facilitate removal of the tire from the wheel rim (for instance, if the entire tool of Rainey were rotated 180° about the longitudinal axis, from the position shown in Fig. 2, then the hook 34 may engage an inside of the tire for removal, in a similar manner as the applicant’s disclosed hook portion) and wherein the hook portion comprises an elongate protrusion (considered to be the leading edge 39 of the entire hook portion/head 10) located at a rear portion of the hook portion (as shown in Fig. 2, the front may be considered the side closest to the rim, such that the location of the elongate protrusion is on the rear portion); a tire-engagement portion (face 33) at the first end of the elongate body, the tire-engagement portion having a substantially flat surface (on either side of the rounded portion, as seen in Fig. 1) and being arranged to, in use during fitting of the tire to the wheel rim, engage, together with the elongate protrusion, with an outer side wall of the tire (as shown in Fig. 2, the tire-engaging portion is in contact with the tire, and the elongate protrusion would be capable of contacting the tire sidewall once the tool is further rotated, in a direction to move the handle further from the centerpost relative to the orientation shown in Fig. 2) to thereby facilitate fitting of the tire, the tire-engagement portion having a major plane which is substantially perpendicular to the longitudinal axis of the elongate body (the major plane being defined through the face of tire-engagement portion 33,, which is shown in Fig. 2 to be perpendicular to the longitudinal axis), and a channel (within 34) formed in a lateral axis of the elongate body at the first end of the elongate body, the channel arranged, in use in fitting the tire to the wheel rim, to receive a side wall of the wheel rim, wherein the channel further comprises a lip (end of hook 34) arranged to, in use to remove a tire, engage with an inner section of the sidewall of the wheeled rim (Fig. 2) in the same manner discussed above to allow hook 34 of the hook portion to remove a tire.
Regarding claim 6, Rainey further discloses that the elongate body comprises an aperture (15).
Regarding claim 7, Rainey further discloses that the elongate body comprises a plurality of structural support elements (side rails 12 on opposite sides of the aperture 15).
Regarding claim 8, Rainey further discloses that the elongate body is generally planar in form (linear portion of the handle is generally planar; 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”).
Regarding claim 9, Rainey further discloses a second hook portion (13) at the second end of the elongate body, the second hook being orthogonal to the longitudinal axis of the elongate body (inner surface of the hook extends orthogonal to the body).
Regarding claim 12, the structure of Rainey is further capable of being used with the elongate protrusion (39) arranged to sit, in use during removal of the tire from the wheel rim, on top of a side wall of the wheel rim (again, when rotated by 180° about the longitudinal axis of the handle) to thereby keep the tool in place during removal of the tire from the wheel rim and to engage, in use during fitting of the tire to the wheel rim, an outer side wall of the tire (when further rotated with to move the handle away from the centerpost, from the position shown in Fig. 2, as discussed above for claim 1; with the hook 34 internal to the tire, wherein the edge/elongate protrusion 39 would contact the rim and fit into the location shown in Fig. 2 for the lip end of hook 34).
Response to Arguments
Applicant’s arguments, see Remarks, filed 22 August 2025, with respect to the objections to drawings and claims and rejections of claims 1-12 under 35 U.S.C. 112 and 102 have been fully considered and are persuasive. 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. Therefore, the objections and rejection have been withdrawn. However, upon further consideration, a new ground(s) of rejection are made under 35 U.S.C. 112, as discussed above.
Applicant's arguments with respect to the rejections under 35 U.S.C. 102 have been fully considered but they are not persuasive. The majority of the applicant’s arguments (A, B and D) relate to the intended use and possible functions of the claimed invention and the prior art, respectively. However, the intended function of Rainey, to engage with the centerpost of the machine, does not prevent the disclosed structure from being capable of use by hand, separate from the centerpost (with no claim limitations relating to a lack of centerpost or having structure that would prevent use with a centerpost), used at different geometrical orientations relative to a tire/wheel (simply by movement of the handle, particularly if used without the centerpost) and/or being capable of also removing a tire (as discussed above for claims 1 and 12).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Each of 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.
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.
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/BRYAN R MULLER/Primary Examiner, Art Unit 3723 22 December 2025