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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 11/5/25 (hereinafter Response) has been entered. Examiner notes that claim 1 has been amended and claims 7 and 8 have been cancelled. Claims 1-4, 9 and 11-20 remain pending in the application with claims 11-20 withdrawn from consideration.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 1-4 and 9 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 claim 1, the amended claim limitations “wherein the one or more portions of the bicycle frame mold are selected from a group consisting of a bottom portion of a down tube of the bicycle frame and a top portion of chain stays of the bicycle frame” and “wherein one or more portions of the exterior surface selected from the group consisting of the bottom portion of the down tube and the top portion of the chain stays are covered by the impact resistant film” are interpreted as being new matter because the originally filed Specification does not specify that the one or more portions … are selected from a group consisting of the bottom portion of the down tube and the top portion of the chain stays. While the originally filed specification discloses these are possible locations, it does not define the group as consisting only of those two options. Instead the originally filed specification is open ended as to the specific locations specifying the impact resistant file may be placed in a variety of different areas or even the entire frame may include the impact resistant layer. See [0026]-[0028].
Claims 1-4 and 9 are rejected on the basis that claim 1 contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of “a bottom portion of a down tube of the bicycle frame and a top portion of the chain stays of the bicycle frame” is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons: the bottom portion of a down tube and the top portion of the chain stay are unique and specific structural elements of a bicycle frame. While a bicycle frame could conceivably not include either a chain stay or a down tube, it is not possible for a chain stay to alternatively be used in place of a down tube or vice-a-versa, therefore they do not share a single structural similarity and have a common use.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
For the sake of compact prosecution,
Any claim not specifically addressed under 112 is rejected as being dependent on a claim rejected under 112.
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 1-4, and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over 2020/0361189 A1 to Nistala et al (hereinafter Nistala) in view of EP 0861769 A1 Wäger and additionally/alternatively as evidenced by RideWrap, “Essential Protection-Downtube,” published 10/23/21, available at https://web.archive.org/web/20211023215534/https://www. ridewrap.ca/products/essential-downtube-regular-thickness-cs/ (hereinafter RideWrap I) and Lizard Skins, “Clear Chainstay,” published 8/12/18, available at https://web.archive. org/web/20180812093227/http://lizardskins.com/mtb/bike-protection/clear-chainstay (hereinafter Lizard Skins).
Regarding claim 1, Nistala discloses a method of making a bicycle frame ([0069] discloses using the disclosed method for producing bicycle frames) comprising:
placing an impact resistant film (5) into one or more portions of a bicycle frame mold … (Fig. 2 and [0004], [0054], [0061], [0064], [0067]-[0068] together disclose the thermoplastic polyurethane (TPU) film is added to a mold and includes properties making it more impact resistant than the underlying woven carbon fiber sheets 10. For example, the TPU film includes impact modifiers and reinforcing agents, known in the art for improving impact resistance, enabling the hardness of the film to be 60 Shore D or above as discussed in [0054] and [0064]. [0069] discloses using the disclosed method for producing bicycle frames.);
placing a plurality of layers of carbon fiber (1) into the bicycle frame mold (Fig. 2 and [0012], [0061], [0069] discloses using the disclosed method for producing bicycle frames including placing 1-10 layers of prepeg carbon fiber into the mold); and
applying heat to the bicycle frame mold to form a bicycle frame that has an exterior surface, wherein … the exterior surface is covered by the impact resistant film (Fig. 2 and [0061], [0067]-[0069] disclose using heat to the mold to form the composite laminate bicycle frame and the exterior surface is the TPU film with improved impact resistance.).
Although Nistala discloses a method for producing a bicycle frame including the impact resistant composite laminate structure made using a mold, Nistala does not explicitly disclose which portions of the bicycle frame would include the impact resistant composite laminate structure. Therefore, Nistala does not explicitly disclose wherein the one or more portions of the bicycle frame mold are selected from a group consisting of a bottom portion of a down tube of the bicycle frame and a top portion of chain stays of the bicycle frame; and wherein one or more portions of the exterior surface selected from a group consisting of the bottom portion of the down tube and the top portion of the chain stays are covered by the impact resistant film.
Wäger teaches that it was old and well known in the art of composite bicycle frames, before the effective filing date of the claimed invention, for the one or more portions of the bicycle frame mold correspond to a bottom portion of a down tube of the bicycle frame and a top portion of chain stays of the bicycle frame; and wherein the exterior surface corresponding to the bottom portion of the down tube and the top portion of the chain stays are covered by the impact resistant film (Fig. 1 & [0014] teaches covering the entire frame in the thermoplastic layer which includes downtube 3 and chain stays 7).
Therefore, it would have been obvious to one of ordinary skill in the art of composite bicycle frames before the effective filing date of the claimed invention to modify the composite bicycle frame disclosed by Nistala to incorporate for the entire bicycle frame to be surrounded by the thermoplastic layer as taught by Wäger in order to increase the strength of the frame and protect the surface better against damage, e.g., see Wäger [0006], 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. Examiner notes that by using the teachings of Wäger of covering the entire frame with the TPU layer, the resulting method includes covering the bottom portion of the down tube and the top portion of the chain stays with the TPU layer.
Additionally and/or alternatively, even though Nistala does not explicitly disclose which parts of the frame include the composite laminate structure, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to make a mold and frame where various individual components of the frame include the composite laminate structure with improved impact resistance because the determining the location(s) for additional impact resistance at individual portions and up to the entire frame is the result of mere optimization of variables, i.e., balancing strength vs weight savings of less materials, that would result from routine engineering experimentation and practices and does not itself warrant patentability. For example, as discussed by RideWrap I and Lizard Skins, the bottom of the down tube and the top of the chain stays are known areas of a bike frame to protect using polyurethane. Therefore in combining the teachings of RideWrap I and/or Lizard Skins with the disclosure of Nistala, a person of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to include the impact resistant layer in the bike frame mold of Nistala at least on the bottom of the downtube and/or the top of the chain stays as taught by RideWrap I and/or Lizard Skins.
Regarding claim 2, depending on claim 1, Nistala further discloses applying a layer of paint to the bicycle frame such that the layer of paint covers the impact resistant film (Fig. 2 & [0061]).
Regarding claim 3, depending on claim 1, Nistala further discloses wherein the impact resistant film comprises a thermoplastic polyurethane (TPU) ([0061]).
Regarding claim 4, depending on claim 1, Nistala further discloses wherein the impact resistant film has a thickness between 0.25 millimeters (mm) and 0.5 mm ([0063]).
Regarding claim 9, depending on claim 1, Nistala further discloses wherein the bicycle frame is a laminate, and wherein applying the heat incorporates the impact resistant film as an integral layer of the laminate (Fig. 2 and [0061] & [0067]-[0068]).
Response to Arguments
Applicant's arguments filed in the Response directed toward the 35 USC § 103 rejection of the claims have been fully considered and they are not persuasive. See Response pp. 5-6.
On p. 6 of the Response Applicant take the position that “Claim 1 is amended herein to recite that the regions of the frame covered by the impact resistant film are “from the group consisting of the bottom portion of the down tube and the top portion of the chain stays.” Wäger, which only discloses covering the entire bicycle frame, fails to disclose such elements.” Examiner disagrees.
As discussed above, the amended claim language recites an improper Markush grouping under MPEP 2117 and thus does not recite a closed group as Applicant appears to be arguing. Furthermore, even if one could interpret the claims as reciting individual closed group limitations, the transitional phrase “comprising” used in claim 1 is “open-ended and does not exclude additional, unrecited elements or method steps.” MPEP 2111.03. Therefore, even if one were considering the recited individual limitation as being closed, additional portions could still be recited due to the open-ended nature of the claim. Therefore, the disclosure of Wäger reciting the entire frame includes the impact resistant film does in combination with Nistala disclose the amended claims.
On p. 6 of the Response, Applicant takes issue with the use of RideWrap I disclosing “paint protection vinyl” however, ignores the statement in RideWrap I that this protective downtube strip is a polyurethane. Further, this position is not relevant because RideWrap I/Lizard Skins are not relied upon for disclosing how the bicycle frame is formed merely that polyurethane strips can be used to cover the downtube/chainstay of the frame for the purpose of protection. Instead, and as repeated above, Nistala is relied upon for specific molding process. RideWrap I and Lizard Skins are only relied upon for teaching where a person of ordinary skill in the art would be motivated to place the impact resistant layers through optimization of variables through routine engineering experimentation and practices.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Arts’s Cyclery, “Ask a Mechanic: Adding Frame Protection,” YouTube, published November 25, 2015, available at https://www.youtube.com/watch?v=eRp10QLTbo0 (hereinafter Ask a Mechanic).
Similar to the disclosure of Ride Wrap I and Lizard Skins, Ask a Mechanic 0:05-0:37, the bottom of the down tube and the top of the chain stays are known areas of a bike frame that are susceptible to damage and applying a polyurethane layer to the exterior of the bike frame in these locations is a known way to add protection from cracking carbon fiber frames.
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