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 .
Claims 1-14, 17, and 35 have been cancelled.
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.
Claims 25-30, 36, and 37 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.
Claims 25-30 form improper hybrid combinations of applicant’s distinct elements. Claim 15 describes applicant’s first embodiment, having the first and second mounting parts 11, 12 (see Figures 1 and 2) of applicant’s description, which do not include spring elements. Claims 25-27 describe features that are specific to the third and fourth mounting parts 13, 14, of applicant’s disclosed embodiment (see Figures 4 and 5, parts 13 do not have parallel flat areas), not the first and second mounting parts, as claimed, thereby rendering the combination structure to be an improper hybrid of different disclosed structures.
Similarly, claims 28-30 include elements of first and second mounting parts 11, 12, that are specific to the embodiment of Figure 7. In Figure 7, the first and second mounting parts 11, 12, do not have the three parallel flat areas as described in claim 15. The disclosure does not indicate that the structures can be combined into one embodiment. Therefore, claims 25-30 describe improper hybrids of distinct structures.
In claim 36, applicant claims a spring element between the first mounting part and the second mounting part and either the housing or the frame component. However, as worded, applicant appears to claim one spring for both mounting parts, which is not consistent with applicant’s disclosed invention. It appears that applicant means to claim a spring for each mounting part, not one spring for both mounting parts, but clarification is required. It also appears to teach a hybrid combination of embodiments, as discussed above. In claims 36, the last two lines, it is not clear what applicant means by “the first flat area and the second flat area are situated in alteration”. The first and second flat areas, as disclosed, are in parallel planes and are proximate to each other, but it is not clear what “in alteration” means and that term is not used in applicant’s detailed disclosure.
In claim 37, it is not clear what applicant means by the second flat area being located on a first surface and the first and third flat areas are located on a second surface. The first and third areas of applicant’s disclosed invention are spaced apart from each other so they clearly are not located on a common “second surface”. Also, applicant’s specification does not use the terms “first surface” and “second surface”, so reading the claim in light of the specification does not clarify this ambiguity.
Claim Rejections - 35 USC § 103
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 15, 16, 18, 19-24, 31-34, and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Watarai (PGPub 2017/0016526) in view of Koyanagi (USPN 6,053,272).
Regarding claims 15 and 32, Watarai teaches a drive system 10 for a manually and electrically operable bicycle, comprising: an electric drive (motor 14) including a housing and a transverse drive shaft 12; and at least one first mounting part 28 and at least one second mounting part 30, which are fastened at the housing and are configured for being fastened at a frame component of the bicycle, wherein the first mounting part is situated at a first side of the electric drive, and the second mounting part is situated at a second side of the electric drive, opposite the first side (see Figure 1) and include transverse passage openings that are parallel to the drive shaft axis.
Watarai lacks the mounting parts having first, second, and third flat areas connected by first and second transition areas.
Koyanagi teaches a motor mounting part 70 that can be formed according to the embodiment of Figure 8 to have a wavelike configuration that includes at least a first flat area (left side, as seen in Figure 8 of Koyanagi), a second flat area (center section), and a third flat area (right side), wherein the first flat area is connected to the second flat area via a first transition area (bend between the left side and the center section) and the third flat area is connected to the second flat area via a second transition area (bend between the center section and the right side). The first flat area and the second flat area are substantially in parallel to one another and the first flat area is coplanar with the third flat area. The first and third flat areas are connected to each other via the second flat area. Koyanagi teaches that the flat mounting part with this wave configuration is less rigid and therefore, absorbs some of the vibrations (col. 5, lines 21-29), which provides a decoupling of the housing from the drive and the frame component.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the mounting parts of Watarai with first, second and third flat areas that are interconnected by first and second transition areas, where at least two of the flat areas are parallel, as taught by Koyanagi, with a reasonable expectation of success, in order to facilitate assembly and accommodate dimensional differences between mounting areas of the motor housing and the frame and to allow the mounting part to absorb some of the vibrations generated by the motor.
Regarding claim 16, the first mounting part and the second mounting part of the combination each include first passage openings and second passage openings, the first passage openings being configured to accommodate connecting parts, the connecting parts fastening the first mounting part and the second mounting part at the frame component and the second passage openings being configured to accommodate second connecting parts, the second connecting parts being configured to fasten the first mounting part and the second mounting part at the housing (Koyanagi teaches that the mounting part 70 is bolted to rails 76, 78, of the frame; col. 5, lines 14-18. Figure 4 of Koyanagi shows at least one vertical bolt extending through a first passage opening in mounting part 70 to connect the mounting part to the frame component 76. Figure 4 also shows a second passage opening at 68 for a second connecting part, bolt 72, to fasten the mounting part to the motor housing 52).
Regarding claim 18, Koyanagi teaches first mounting part and the second mounting part are each a flat sheet 70 (in as much as applicant’s wave configuration is a flat sheet).
Regarding claims 19 and 31, it is well known and taught by Koyanagi that motor mounting brackets absorb dampen some vibrations between the drive and frame components. The mounting parts of the combination are relatively thin so the transition area is configured to deform, absorb and dampen oscillations or vibrations between the two first and second flat areas. A transfer of oscillations and vibrations from the drive to the frame component is damped in the process.
Regarding claim 20, Koyanagi teaches that all of the first passage openings which are configured for connection to the frame component (Figure 4, unnumbered bolts connect mounting part 70 to frame components 76, 78), are situated at the first flat area and the third flat area, all second passage openings, which are configured for connection to the housing of the electric drive, being situated at the second flat area (Koyanagi shows second connector bolt 72 connecting to drive housing 52).
Regarding claim 21, a number of the first and second mounting parts taught by Watari is even (four).
Regarding claim 22, the first mounting part 28 and the second mounting part 30 of Watarai partially project beyond the housing 20 and, between each other, define a receiving space, through which an electrical connection 18C (see Figure 2 of Watarai) of the electric drive extends to a power store of the bicycle.
Regarding claim 23, the combination teaches that there is an overlap in an area of greater than 50% between each of the first and second mounting parts and the housing, in a top view, in parallel to a central axis of a driving shaft (the mounting parts between the frame and housing of Watarai entirely overlap the housing as seen in top view).
Regarding claim 24, Watarai teaches a nut situated at each of the first and second mounting part or at least one passage opening of the first and second mounting parts includes a female thread (threaded openings in mounting parts 28, 30, form nuts for bolts 32).
Regarding claim 32, the combination of Watarai and Koyanagi teaches all of the claimed features, as discussed above. Watarai further teaches a bicycle, comprising: a drive system 10 including: an electric drive 14 including a housing 20, 22, 24, and at least one first mounting part 28 and at least one second mounting part 30, which are fastened at the housing and are configured for being fastened at a frame component 14 of the bicycle, wherein the first mounting part is situated at a first side of the electric drive, and the second mounting part is situated at a second side of the electric drive, opposite the first side.
Regarding claims 33 and 34, Watarai teaches two additional pairs of mounting parts (Figure 1 shows three pairs of mounting parts 28, 30, each consisting of only two parts, one on each side of the electric drive motor 10) comprising: the first mounting part and second mounting part, which are fastened at the housing and are configured for being fastened at a frame component of the bicycle, wherein the first mounting part is situated at a first side of the electric drive, and the second mounting part is situated at a second side of the electric drive, opposite the first side.
Regarding claim 37, it is not clear what applicant means to claim because the language does not describe applicant’s disclosed structure. As understood, the combination teaches all of the claimed features, including first and third areas that are coplanar.
Claim(s) 25 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Watarai and Koyanagi as applied to claims 15, 16, 18, 19-24, 31-34, and 37 above, and further in view of Aiba (USPN 4,412,597).
The combination lacks a damping element between the mounting parts and the housing or frame component.
However, Aiba shows a damping element 81 (a rubber spring; see Figure 3) between mounting parts 82, 83, and the motor housing.
It would have been obvious to one of ordinary skill in the art to provide the combination drive system with a damping element between the first and second mounting parts and the housing and/or between the first and second mounting parts and the frame component, as taught by Aiba, in order to dampen shocks between the motor and the frame.
Claim 36 is rejected under 35 U.S.C. 103 as being unpatentable over Watarai in view of Koyanagi and Aiba (USPN 4,412,597).
Regarding claim 36, Watarai teaches a drive system 10 for a manually and electrically operable bicycle, comprising: an electric drive (motor 14) including a housing and a transverse drive shaft 12; and at least one first mounting part 28 and at least one second mounting part 30, which are fastened at the housing and are configured for being fastened at a frame component of the bicycle, wherein the first mounting part is situated at a first side of the electric drive, and the second mounting part is situated at a second side of the electric drive, opposite the first side (see Figure 1) and include transverse passage openings that are parallel to the drive shaft axis.
Watarai lacks a wave configuration of the mounting parts and a damping element between the mounting parts and the housing or frame.
However, Aiba shows a damping element 81 (a rubber spring; see Figure 3) between the mounting parts 82, 83, and the motor housing. As discussed above, Koyanagi teaches a motor mounting part 70 that can be formed according to the embodiment of Figure 8 to have a wave configuration that includes at least a first flat area (left side, as seen in Figure 8 of Koyanagi), a second flat area (center section), and a third flat area (right side), where the first and third flat areas are situated in alteration, as understood.
It would have been obvious to one of ordinary skill in the art to provide Watarai with a damping element between the first and second mounting parts and the housing and/or between the first and second mounting parts and the frame component, as taught by Aiba, in order to dampen shocks between the motor and the frame. It would also have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the mounting parts of Watarai with first, second and third flat areas that are interconnected by first and second transition areas, where at least two of the flat areas are parallel, as taught by Koyanagi, with a reasonable expectation of success, in order to facilitate assembly and accommodate dimensional differences between mounting areas of the motor housing and the frame and allowing the mounting part to absorb some of the vibrations generated by the motor.
Allowable Subject Matter
Claims 26, 27, 29, and 30 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.
Response to Arguments
Applicant's arguments filed 06/23/2026 have been fully considered but they are not persuasive.
Applicant’s arguments do not specifically address the rejection based on Watarai in view of Koyanagi. Also, applicant’s amendments and remarks do not address all the rejections based on 35 USC 112(b). Therefore, those rejections are restated above.
Applicant’s arguments do suggest that the Koyanagi reference does not teach flat areas in parallel planes. The examiner disagrees. The “stepped” embodiment of Figure 8, col. 5, lines 29-32, is clearly illustrated as having ends of mounting part/plate 70 that are flat and coplanar and a center that is flat and offset from the ends. Mounting part 70 is described, in col. 5 of Koyanagi, as having “a flat left-hand side for the modified seat bracket, an upward curve, a horizontal midsection, a downward curve and another flat right-hand side”. Therefore, the examiner maintains that Koyanagi teaches alternating flat areas in parallel planes.
Applicant argues that Koyanagi does not achieve the controlled damping and decoupling of the claimed invention. The examiner disagrees. Koyanagi teaches, in col. 5, lines 46-50, for example, that the plate bracket 70, by virtue of its shape, can absorb some of the horizontal vibration component. Therefore, Koyanagi teaches a mounting part that provides controlled damping and decoupling.
Applicant argues that the mounting part taught by Koyanagi, which is described as being on a motorcycle, is not appropriate for use on a pedal assist e-bike because the damping effect may have a negative impact. The examiner disagrees. Motorcycles and e-bikes have a good amount of overlapping structure. An electric motor may not produce the same degree of vibration as an engine, but it does transfer a certain amount of vibration within the bike that may need to be mitigated. Koyanagi teaches that the mounting structure is simple, easy to construct, and inexpensive. It also indicates that the damping effect of the mounting part is easily adjusted (col. 6, lines 46-64) to the needs of the vehicle and its user. Therefore, the mount structure of Koyanagi is an inexpensive modification that produces a beneficial damping effect, and the damping effect can be adjusted to the type of vehicle to which it is applied. The examiner maintains that the combination is appropriate and the claims remain rejected as indicated 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to whose telephone number is (571)272-6641. The examiner can normally be reached Monday-Friday, 8-5pm.
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, Valentin Neacsu can be reached on 571-272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNE MARIE M BOEHLER/ Primary Examiner, Art Unit 3611
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