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 18-20 have been canceled.
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 battery cells in a vertically spaced configuration (recited in claims 10 and 11) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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 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 10-17 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.
In claims 10 and 11, applicant amended claims recite battery cells in a vertically spaced configuration. However, applicant’s detailed disclosure has not clearly described or illustrated what is meant by this language. This language implies that each battery cell is elongated in one dimension, but does not explicitly describe that feature. The drawings do not show vertically spaced battery cells in the housing. Applicant’s detailed disclosure, in paragraphs [0039], describes “a battery pack configured to house or contain multiple battery cells in a vertically spaced configuration. For example, the battery 400 can have a housing shaped to house or contain battery cells in a vertical or upright position” and “the battery 400 can support the vertical configuration of cells in an elongated configuration”. This suggests that the vertically spaced configuration could mean cells in a vertical or upright position, which suggests the long axis of an elongated battery would be vertical. The term “elongated configuration” also implies end-to-end orientation of the cells that would be horizontally or vertically positioned in the housing. Paragraphs [0070] and [0071] indicate the cells are “in a vertical orientation within the housing” and “housing that contains the multiple battery cells in vertical positions”, respectively, but no other description of the cell position is discussed.
It is also noted that the battery housing is positioned along the down tube and the down tube is oriented at a diagonal or substantial angle relative to vertical and horizontal. It is not clear if applicant means that the cells are vertical relative to the housing or that when the cells are in the housing they are vertical (at an angle to the housing but vertical relative to the ground when installed on the bicycle). Therefore, applicant has not adequately described what applicant means by this claim language.
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 10-17 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 10 and 11 recite battery cells positioned in a vertically spaced configuration within the housing. However, it is not clear what applicant means by this claim language, as discussed above.
For the purpose of this Office action, it is assumed that applicant means to claim that elongated battery cells with a longer dimension that is generally vertical relative to the housing when the housing is positioned horizontally, but clarification of the language or cancellation is required.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 10-12, and 16 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Bender (USPN 11,945,316).
Regarding claim 1, Bender teaches an electric bicycle 600 comprising: a frame 602, wherein the frame includes: a head tube 620 configured to support handlebars (see Figure 6 and 8; col.16, lines 27-33) and a front fork 630; a seat tube 636 configured to support a saddle post (carrying seat 638) that holds a saddle 368 (Figure 6) and is placed at least partially within the seat tube; a top tube (not shown, see 16, lines 41-42) that extends from the head tube to the seat tube (top tube, by definition); and a down tube 624 that extends from the head tube to the seat tube (Figure 8); and an electric battery 606 that is partially disposed within the down tube (see Figures 12 and 14 which show battery enclosure 810 inside the down tube 624 and battery outer wall 812 extends above side walls of the down tube so as to be only partially disposed within the down tube), wherein the electric battery includes: multiple battery cells (col. 17, lines 9-10, see Figure 13)); and a housing (enclosure 810) that contains the multiple battery cells (see Figure 13) and having a lower portion (bottom of enclosure 810) and an upper portion (top of enclosure 810 at outer wall 812) wherein the lower portion of the housing of the electric battery is disposed within an inner area of the down tube of the frame when the electric battery is removably fixed to the frame, and wherein the upper portion of the housing of the electric battery is disposed outside of the down tube of the frame when the electric battery is removably fixed to the frame (see Figures 9, 10, 12, 14, that show the top end of the battery enclosure extending above sides of the down tube; col. 20, lines 31-50 that suggest the battery can be “partially” sunk into the down tube).
Regarding claim 2, Bender teaches the upper portion of the housing of the electric battery includes a handle portion 814 (Figures 9, 10) along at least one edge of the housing that facilitates lifting the electric battery out of the down tube of the frame of the electric bicycle.
Regarding claims 3 and 4, Bender teaches upper portion of the housing of the electric battery includes a T-shaped edge that facilitates lifting the electric battery out of the down tube of the frame of the electric bicycle (see Figure 10, the upper portion of housing 810 is wider than the lower portion to form a T-shape with the vertical sides of the housing 810).
Regarding claim 5, the down tube includes a ledge (internal ribs forms narrow longitudinal ledges on which the battery sits; see Figure 15 and col. 22, lines 54-64) positioned within the inner area of the down tube upon which the electric battery sits when disposed within the inner area of the down tube of the frame.
Regarding claim 10, the multiple battery cells are positioned in a vertical orientation within the housing of the electric battery (see Bender, Figure 13).
Regarding claims 11 and 16, Bender teaches a battery 606 for an electric bicycle, the battery comprising: multiple battery cells (see Figures 13 and col. 17, lines 9-10) in a vertically spaced configuration (see Figure 13, battery cells extend along the diagonal down tube such that forward battery cells are vertically spaced from rearward cells when the battery pack is mounted within the down tube); and a housing that contains the multiple battery cells in vertical positions, wherein the housing includes: a lower portion (see Figures 8-10, 12) having a shape that fits within an inner area of a tube of a frame of an electric bicycle; and an upper portion 812 having a shape that facilitates lifting of the battery out of the tube of the frame of the electric bicycle. The upper portion 812 of the battery is located outside of the inner area (the inner area being the area occupied by the lower portion of the battery) when the battery is partially disposed within the tube (as also discussed above).
Regarding claim 12, the upper portion 812 has a T-shaped edge (see Figure 9).
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.
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) 6-9 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bender in view of EP2653371 to Beistegui.
Regarding claims 6, Bender lacks the down tube including a ledge that extends from one side of the down tube to an opposite side of the down tube within the inner area of the down tube and is configured to support the electric battery when disposed within the inner area of the down tube of the frame.
Beistegui teaches an electric bicycle having a down tube 1 that includes a ledge 2 that extends from one side of the down tube to an opposite side of the down tube within the inner area of the down tube (see Figures 6© and 6(d) and is configured to support an electric battery 5 when disposed within the inner area of the down tube of the frame. Beistegui teaches that the arrangement allows for improved integration between the frame and the battery, increased options for arranging down tube in the frame, and simplification of the manufacturing process that reduces cost (see Beistegui, para [0001]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the Bender electric bicycle with a ledge that extends from one side to an opposite side of the down tube within the down tube that supports the battery, as taught by Beistegui, with a reasonable expectation of success, in order to improve integration of the frame and battery and improving the manufacturing process to reduce cost.
Regarding claims 7 and 8, the ledge forms an internal cavity within the inner area of the down tube and is configured to support the electric battery when disposed within the inner area of the down tube of the frame (see Figure 6(d)).
Regarding claim 8, Bender teaches guiding cables 890 routed in spaces or grooves 866 formed by side edges in the frame (see col. 23, lines 5-15, and Figure 11).
Regarding claim 9, the combination teaches a down tube that includes a ledge positioned within the inner area of the down tube upon which the electric battery sits when disposed within the inner area of the down tube of the frame, as discussed above. Bender further teaches that the electric bicycle further comprises a battery lock 850 (see col. 22, lines 10-23) with a carrier for connecting the battery lock to the battery support within the frame (see Bender, Figures 15 and 16) and a controller for the battery lock at the battery (col. 22, lines 10-11, “battery lock 850 may include one or more actuators or controllers” and, lines 22-21, the battery communicates directly with a mobile device). Although Bender does not explicitly describe a carrier for a controller, it would have been obvious to mount the lock controller with the battery lock on a common carrier in view of the teaching of Bender, in order to consolidate the battery lock structures.
Regarding claim 13, Beistegui teaches that the lower portion of the battery housing has a tube engagement portion that matches a shape of ledge 2 within the inner area of the tube of the frame of the electric bicycle when the battery is disposed partially within the tube of the frame of the electric bicycle (see Figure 6(d) and para [0023]).
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bender in view of Goirgini (PGPub 2019/0259982).
Regarding claim 14, Bender teaches multiple battery cells that are part of a cell assembly that is positioned within the housing, but it is silent regarding a potting compound disposed between the multiple battery cells within the cell assembly.
Goirgini teaches a battery module/battery cell assembly having multiple battery cells and a potting compound disposed between the cells in the cell assembly. Goirgini also teaches that, in general, potting is a process of filling or embedding an enclosure with a material for maintaining batteries in special relationship, providing resistance to shock and vibration, and creating a seal against moisture, solvents and corrosive agents (see Goirgini, para [0003]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide potting compound between the battery cells of the combination battery, in view of Goitgini, with a reasonable expectation of success, in order to maintain the battery cells in place, resist shock and vibration, and create a seal against contaminants.
Claim(s) 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bender in view of Buck et al. (PGPub 2024/0128577) and Talavasek (PGPub 2014/0175768).
Regarding claim 15, the Bender lacks a battery management system; and end caps that include one or more connectors, one or more ports, and one or more indicators.
Buck teaches a battery for an electric bicycle having a housing 304 that contains a battery management system, BMS (see para [0094}. The housing 304 also has end caps 344, 348 (para [0095]; Figures 3a, 3b) that include connectors (battery lock 102) and ports (charging port 114).
Talavasek teaches a battery having end caps and an indicator 435 on the end cap (see [0052]; power switch 430 can be attached to end cap 340 and includes a screen 435).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the battery cells with a BMS and with end caps having ports and connector, in view of Buck, with a reasonable expectation of success, in order to provide regulate the charging of the battery pack and provide physical and electrical connections between the battery pack and the bicycle. It would also have been obvious to provide the battery pack with an indicator in one of the end caps, as taught by Talavasek, in order to communicate charge level of the battery to the user.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bender in view of Talavasek (PGPub 2014/0175768).
Bender lacks a teaching to shape the lower portion of the battery for placement into a top tube of the frame.
Talavasek teaches a battery shaped and configured to be placed at least partially in a bicycle top tube (see para [0049]) depending on the desired location of the battery pack.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure the battery of Bender for placement in a portion of the top tube, as taught by Talavasek, with a reasonable expectation of success, in order to position the battery in a location more accessible to the rider.
Response to Arguments
Applicant's arguments filed 12/12/2025 have been fully considered but they are not persuasive.
Applicant indicates that the amendments to claims 10 and 11 overcome the objection to the drawings and the rejections under 35 USC 112(a) and (b). The examiner disagrees. Applicant’s drawings do not show a vertically spaced configuration of the battery cells. Also, applicant’s detailed description appears to conflate vertically oriented cells with vertically spaced cells, which would normally be understood to be different configurations, as discussed above. Further, as also discussed above, it is not clear if the cells are vertical/vertically spaced relative to the ground when installed within the diagonal down tube (making then angled relative to the battery case), or vertical/vertically spaced relative to the battery casing (which would make them diagonal relative to the ground when installed in the down tube). Applicant’s disclosure is not clear or consistent on these points, so the claims are also unclear.
Regarding claims 1 and 11, applicant claims a battery “partially disposed within the down tube” which, applicant argues, is not taught by the prior art to Bender. The examiner disagrees. Bender, for example in Figures 12 and 14, shows battery enclosure 810 inside the down tube 624 and battery outer wall 812 extending above side walls of the down tube so as to be only partially disposed within the downtube and partially outside of the downtube.
Bender also makes several refences to partial integration of the battery into the frame. In col. 19, lines 19-23, Bender teaches “at least a portion of the battery 606 may be positioned within the recess 800” and “the recess 800 may be shaped to receive the battery 606 or at least a portion of the battery 606 therein”. In col. 20, lines 31-50, Bender describes “at least a portion of the of the battery may sink into the downtube” and “sinking the battery 606 at least partially into downtube 624”. Reference to the battery at least partially extending into the frame appears in the Bender Abstract, the Summary of the Invention, and claim 2.
Applicant argues that: “Bender does not disclose an electric battery that is partially disposed within the down tube (e.g., a partially integrated battery), as claimed. Instead, Bender discloses that a ‘battery may be configured to be received within the downtube and the recess to establish a continuous surface comprising one or more outer surfaces of the downtube and one or more outer surfaces of the battery (Bender, 1, lines 45-52 and Figure 14, emphasis added)”. As discussed above, Bender does explicitly recite a battery that is partially received in the downtube (in col. 19, 20, Abstract, etc. as indicated above). The top of the Bender battery extends upwardly out of the downtube, as seen in Figure 14, and sides of the top appear to form the contiguous surface with sides of the downtube. This is consistent with the claim language and certainly does not teach away from a partially disposing the battery in the downtube.
Applicant also argues that Bender lacks a controller disposed within the inner area of the down tube and a controller carrier. The examiner disagrees. Bender teaches a lock 850 that is positioned within down tube 624, as seen in Bender Figure 16, for example. The lock is mounted, via an enclosure or carrier of the lock 850 (best seen in Bender Figures 15 and 16), to a support surface along the lower interior surface of the down tube. Bender also teaches that the lock 850 may include “controllers” (col. 22, lines 10-11). Therefore, a controller is understood to be mounted with the lock and connected to a lower interior mounting surface of the down tube via the lock/controller carrier. The rejection is being maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Van der Mik shows a battery pack 50 having a lower end within a bicycle down tube and an upper end extending a substantial distance out of the down tube (for example, Figures 22 and 23).
Yang, Shahana, and Cai teach batteries partially extending into a bicycle frame.
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 Anne Marie M. Boehler 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 at 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
/ab/