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 .
Status of the Claims
Applicant's submission filed on 3/4/26 (hereinafter Response) has been entered. Examiner notes that claims 1-2 and 18-19 have been amended. Claims 1-20 remain pending with claims 6-17 withdrawn from consideration.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 and 18-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1 and 18 the phrase “wherein the seatmast extends upward from the top tube at an angle such that the seatmast aligns with the seat tube” is interpreted as failing to comply with the written description requirement because the originally filed Specification is devoid of description of alignment of the seatmast and the seat tube. Notably, Applicant found it necessary in order to explain the amendment to provide annotations to the originally filed figure 2A in order to properly explain the amendments to the claims. Because the originally filed specification did not include any disclosure relating to the newly amended phrase relating to alignment of the seatmast and the seat tube, the phrase is considered to be new matter.
Any claim not specifically addressed under 112(a) is rejected as being dependent on a claim rejected under 112(a).
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 4 and 18-20 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 claims 4 and 18, 20, the “opening” renders the claim indefinite because it lacks clear antecedent basis when compared to the previously introduced term “gap” in claims 1 and 18. Both the term “gap” and “opening” appear to be referencing the same structure but a different term is used hence rendering the claims indefinite. For the sake of compact prosecution the phrase “gap” and “opening” are interpreted as being the same term.
Any claim not specifically addressed under 112(b) is rejected as being dependent on a claim rejected under 112(b).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2012/0274041 A1 to Nicol in view of US 8,066,295 B1 to Crusack et al (hereinafter Crusack).
Regarding claim 1, Nicol discloses a bicycle frame (1) comprising:
a top tube (3) that connects to a head tube (7) at a front portion (A) of the bicycle frame (1) (Annotated Fig. 1 and [0037]);
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a seat tube (9) that extends from the bottom … (E) (Annotated Fig. 1);
a first seat stay (16, 17) that connects to the top tube (3) at a first point of intersection (B) and a second seat stay (15, 17) that connects to the top tube at a second point of intersection (B’) such that a back portion (C) of the top tube (3) extends beyond the first point of intersection (B) and the second point of intersection (B’) so that the top tube (3) is a cantilever (D) (Annotated Figs. 1 and 4 & [0040] and [0052] disclose/depict an interconnected bicycle frame including a drive and non-drive side and therefore the disclosure for the non-drive side depicted in Annotated Fig. 1 is also valid for the drive side. Annotated Fig. 1 depicts a first seat stay made up of the structure of numbers 16 and 17, i.e., the first seat stay, and intersecting the top tube 3 at point B and though not shown in Fig 1, the structure of numbers 15 and 17, i.e., the second seat stay, is interpreted as intersecting the top tube 3 at point B’. The top tube 3 includes portion
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C located behind the intersection point B and hangs unsupported and thus is cantilevered.); and
a seatmast (27) sized to receive a seatpost (Annotated Figs. 1 and 4 & [0009] and [0039] discloses the seat tube, i.e., seatmast is sized to receive a height adjustable seat post), wherein the seatmast (27) extends upward from the top tube (3) at a location of the top tube (3) that is to the rear of the first point of intersection (B) and the second point of intersection (B’) such that the back portion (C) of the top tube (3) forms the cantilever (D) (Annotated Figs. 1 and 4 & [0009] and [0039]),
wherein the cantilever (D) results in a gap (11) between the seatmast (27) and the seat tube (9) (Annotated Fig 4 depicts the gap 11 disposed between the seatmast 27 and seat tube callout 9 of Annotated Fig. 1), and wherein the seatmast (27) extends upward from the top tube (3) at an angle such that the seatmast (27) aligns with the seat tube (9) (Second Annotated Fig. 1 depicts at a minimum that the angle of the rearward facing portion of the seatmast aligns with a portion of the forward facing portion of the seat tube).
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However, even if assuming, arguendo, that Nicol could not be interpreted as disclosing that the seatmast (27) extends upward from the top tube (3) at an angle such that the seatmast (27) aligns with the seat tube, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the angle of the seat mast to be more vertically angled to the point where the resulting structure would be a seatmast at an angle such that the seatmast aligns with the seat tube because the selection of the seatmast angle is the result of mere optimization of variables, e.g., based on desired geometry of the bicycle to put the rider in the optimal position, e.g,, adjust reach, that would result from routine engineering experimentation and practices and does not itself warrant patentability.
Finally, it is noted that Applicant does not positively recite any criticality to the alignment of the seatmast and the seat tube, therefore such optimization thereof would be obvious to the skilled artisan. Accordingly arriving at the claimed arrangement of the alignment of the seatmast and the seat tube would result from routine engineering practices and experimentation and is not itself non-obvious absent any criticality to such. MPEP 2144.05.II.A.
Further, although Nicol discloses the frame is a bicycle frame and thus would be understood to one of ordinary skill in the art as having pedals and cranks, Nicol does not explicitly disclose that the frame (1) includes a bottom bracket.
Crusack teaches that it was old and well known in the art of bicycle frames, before the effective filing date of the claimed invention, for a frame to include a bottom bracket (52) (Fig. 1 & Col 7 lns 42-51).
Therefore, it would have been obvious to one of ordinary skill in the art of bicycle frames before the effective filing date of the claimed invention to modify the bicycle frame disclosed by Nicol to incorporate a bottom bracket as taught by Crusack in order to lighten the overall frame structure and increase the performance, e.g., see Crusack col 7 lns 52-63, and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 2, depending on claim 1, the modified combination of Nicol/Crusack further discloses: a down tube (Nicol - 4) that extends from the head tube (Nicol - 7) to the bottom bracket (Nicol - E); and a seat tube (Nicol - 9) that extends from the bottom bracket (Nicol – E/Crusack - 52) (Nicol - Annotated Fig. 1/Crusack - Fig. 1 & Col 7 lns 42-51).
It would have been obvious to have modified Nicol in view of the teachings of Crusack for at least the same reasons discussed above in claim 1 and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 3, depending on claim 2, Nicol further discloses a first support (F) that extends from the seat tube (9) to the first seat stay (16,17) and a second support (F’) that extends from the seat tube (9) to the second seat stay (15, 17) (Annotated Fig. 1 noting that as discussed above in claim 1, the drive side, although not shown in the figures includes the same components as the shown non-drive side.).
It would have been obvious to have modified Nicol in view of the teachings of Crusack for at least the same reasons discussed above in claim 1 and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 4, depending on claim 3, Nicol further discloses an opening (11) formed under the top tube (3) and configured to convey turbulent air from underneath the top tube (3) to behind the bicycle frame (1), wherein at least a portion of the opening (11) is formed by a bottom portion of the top tube (3), at least a portion of the opening (11) is formed by the first seat stay (16,17) and the second seat stay (15,17), and at least a portion of the opening (11) is formed by the first support (F) and the second support (F’) (Fig. 4 & Annotated Fig. 1 and [0051] disclose that air is guided through the flow-through opening 11 to behind the frame “while largely avoiding turbulence” which means that while turbulent air is reduced, it still exists and is conveyed through the opening which is below the top tube.).
It would have been obvious to have modified Nicol in view of the teachings of Crusack for at least the same reasons discussed above in claim 1 and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 5, depending on claim 2, the modified combination of Nicol/Crusack further discloses a first chain stay (Nicol - 18) that extends from the bottom bracket (Crusack – 52) to the first seat stay (Nicol - 16, 17) and a second chain stay (Nicol - 18) that extends from the bottom bracket (Crusack - 52) to the second seat stay (Nicol – 15, 17) (Nicol - Annotated Fig. 1; Crusack - Fig. 1 & Col 7 lns 42-51).
It would have been obvious to have modified Nicol in view of the teachings of Crusack for at least the same reasons discussed above in claim 1 and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 18, Nicol discloses bicycle frame (1) comprising:
a top tube (3) that connects to a head tube (7) at a front portion (A) of the bicycle frame (1) (Annotated Fig. 1 and [0037]);
a seat tube (9) that extends from the bottom … (E) (Annotated Fig. 1);
a first seat stay (16, 17) that connects to the top tube (3) at a first point of intersection (B) and a second seat stay (15, 17) that connects to the top tube at a second point of intersection (B) Annotated Figs. 1 and 4 & [0040] and [0052] disclose/depict an interconnected bicycle frame including a drive and non-drive side and therefore the disclosure for the non-drive side depicted in Annotated Fig. 1 is also valid for the drive side. Annotated Fig. 1 depicts a first seat stay made up of the structure of numbers 16 and 17, i.e., the first seat stay, and intersecting the top tube 3 at point B and though not shown in Fig 1, the structure of numbers 15 and 17, i.e., the second seat stay, is interpreted as intersecting the top tube 3 at point B’);
a seatmast (27) sized to receive a seatpost (Annotated Figs. 1 and 4 & [0009] and [0039] discloses the seat tube, i.e., seatmast is sized to receive a height adjustable seat post), wherein the seatmast (27) extends upward from the top tube (3) at a location of the top tube (3) that is to the rear of the first point of intersection (B) and the second point of intersection (B’) such that a back portion (C) of the top tube (3) forms a cantilever (D) (Annotated Figs. 1 and 4 & [0009] and [0039]),
wherein the cantilever (D) results in a gap (11) between the seatmast (27) and the seat tube (9) (Annotated Fig 4 depicts the gap 11 disposed between the seatmast 27 and seat tube callout 9 of Annotated Fig. 1), and wherein the seatmast (27) extends upward from the top tube (3) at an angle such that the seatmast (27) aligns with the seat tube (9) (Second Annotated Fig. 1 depicts at a minimum that the angle of the rearward facing portion of the seatmast aligns with a portion of the forward facing portion of the seat tube); and
an opening (11) formed under the top tube (3) and configured to convey turbulent air from underneath the top tube (3) to behind the bicycle frame (1) (Annotated Figs. 1 and 4 and [0051] disclose that air is guided through the flow-through opening 11 to behind the frame “while largely avoiding turbulence” which means that while turbulent air is reduced, it still exists and is conveyed through the opening which is below the top tube.).
However, even if assuming, arguendo, that Nicol could not be interpreted as disclosing that the seatmast (27) extends upward from the top tube (3) at an angle such that the seatmast (27) aligns with the seat tube, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the angle of the seat mast to be more vertically angled to the point where the resulting structure would be a seatmast at an angle such that the seatmast aligns with the seat tube because the selection of the seatmast angle is the result of mere optimization of variables, e.g., based on desired geometry of the bicycle to put the rider in the optimal position, e.g,, adjust reach, that would result from routine engineering experimentation and practices and does not itself warrant patentability.
Finally, it is noted that Applicant does not positively recite any criticality to the alignment of the seatmast and the seat tube, therefore such optimization thereof would be obvious to the skilled artisan. Accordingly arriving at the claimed arrangement of the alignment of the seatmast and the seat tube would result from routine engineering practices and experimentation and is not itself non-obvious absent any criticality to such. MPEP 2144.05.II.A.
Further, although Nicol discloses the frame is a bicycle frame and thus would be understood to one of ordinary skill in the art as having pedals and cranks, Nicol does not explicitly disclose that the frame (1) includes a bottom bracket.
Crusack teaches that it was old and well known in the art of bicycle frames, before the effective filing date of the claimed invention, for a frame to include a bottom bracket (52) (Fig. 1 & Col 7 lns 42-51).
Therefore, it would have been obvious to one of ordinary skill in the art of bicycle frames before the effective filing date of the claimed invention to modify the bicycle frame disclosed by Nicol to incorporate a bottom bracket as taught by Crusack in order to lighten the overall frame structure and increase the performance, e.g., see Crusack col 7 lns 52-63, and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 19, depending on claim 18, Nicol further discloses:
a first support (F) that extends from the seat tube (9) to the first seat stay (16,17); and a second support (F’) that extends from the seat tube (9) to the second seat stay (15, 17) (Annotated Fig. 1 noting that as discussed above in claim 1, the drive side, although not shown in the figures includes the same components as the shown non-drive side.).
It would have been obvious to have modified Nicol in view of the teachings of Crusack for at least the same reasons discussed above in claim 18 and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 20, depending on claim 19, Nicol further discloses wherein at least a portion of the opening (11) is formed by a bottom portion of the top tube (3), at least a portion of the opening (11) is formed by the first seat stay (16, 17) and the second seat stay (15, 17), and at least a portion of the opening (11) is formed by the first support (F) and the second support (F’).
(Fig. 4 & Annotated Fig. 1 and [0051] disclose that air is guided through the flow-through opening 11 to behind the frame “while largely avoiding turbulence” which means that while turbulent air is reduced, it still exists and is conveyed through the opening which is below the top tube.).
It would have been obvious to have modified Nicol in view of the teachings of Crusack for at least the same reasons discussed above in claim 2 and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Response to Arguments
Applicant's arguments filed in the Response directed toward the 35 USC § 102(a)(1) rejection of claims 1 and 18 have been fully considered and they are persuasive in part. See Response pp. 6-8. As a result the 102 rejection of claims 1 and 18 is withdrawn because Nicol does not explicitly disclose a bottom bracket, however, after further consideration claims 1 and 18 are rejected under 103 in view of Nicol/Crusack.
Applicant on p. 7 Applicant states “Nicol does not disclose or suggest a cantilever that “results in a gap between the seatmast and the seat tube,” as claimed. Examiner disagrees, gap/opening 11 clearly is formed between the seatmast and the seat tube as discussed above, e.g., see Nicol Figs. 1-2.
Applicant on pp. 7-8 takes the position that Nicol fails to disclose that the seat tube 9 does not align with the seatmast 27 as claimed. Examiner disagrees. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the specific argued alignment shown Applicant’s annotated Fig. 2A on p. 7 of the Response) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Thus while Nicol cannot be relied upon to disclose alignment of the fron leading edge of the seat mast with the front leading edge of the seat tube and alignment of the rear trailing edge of the seatmast with the rear trailing edge of the seat tube, these features are not claimed. Instead, as discussed above, Nicol can be relied upon for disclosing alignment of the rear trailing edge of the seatmast with the front leading edge of the seat tube.
Further, as discussed above, even if one were to assume, arguendo, that Applicant had claimed the features argued/shown in Annotated Fig. 2a on pl. 7 of the Response, it would have been obvious to have modified Nicol where the resulting structure would satisfy the argued arrangement.
For at least these reasons Applicant’s arguments are not persuasive and the rejection is maintained.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER B WEHRLY whose telephone number is (303)297-4433. The examiner can normally be reached Monday - Friday, 8:30 - 4:30 MT.
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/CHRISTOPHER B WEHRLY/Primary Examiner, Art Unit 3611