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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1-3, 5-12, and 14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,787,499. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the presently claimed features are recited in the prior patent claims.
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) 1, 2, 5-12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Abe (PGPub 2015/0180517, cited by applicant) in view of Hamann (PGPub 2018/0056812).
Regarding claim 1, Abe teaches a bicycle communication apparatus 12 comprising: a housing 72 (shown in Figure 5) configured to be attached to the frame 14 (communication apparatus 12 comprising housing 72 is shown in Figure 1 attached to the down tube 14a of frame 14); a control device 56 provided to the housing; an input ODL, ODR, configured to communicate with the control device based on a user input; a wireless communicator 46 configured to send information to a device (cycle computer CC) remotely located from the control device (see Figures 4 and 5, para [0047], [0062]-[0063], [0066]); and a wired communicator 44, 48, 50, configured to transmit a control signal to a bicycle component via an electrical cable C6, C7, in response to operation of the input, the control device being configured to control the bicycle component via the wired communicator based on the operation of the input. Abe is silent regarding the wireless communicator receiving information from the remote device and it lacks an indicator disposed on the housing that is configured to indicated the information.
Hamann teaches a bicycle communication apparatus 104 including a control device (processor 104; see Figure 1 and para [0029]-[0030]), an input as broadly recited (various inputs, including cadence sensor 180, communicate with the processor 104), and a wireless communicator configured to receive information from a remotely located device 120 (wireless communication between the input device 120 and the processor 104; see para [0040], last two lines). The communicator is configured to send and receive information from the input device (smart phone 120) remotely located from the control device 104. Hamann also teaches an indicator on the communication apparatus 104 (display 106 on processor 104; see Figure 1 and para [0039]) that is configured to indicate the information (information about speed, cadence, etc.; para [0039]).
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 remote device of Abe to send information to the wireless communicator, in view of the teaching of Hamann, with a reasonable expectation of success, in order to provide user input at the remote device and signals based on updated software to the control device such that the bicycle component is controlled based on operation of the input and information from the remote device. It would also have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to provide an indicator on the control device/communicator of Abe, in view of Hamann, in order to display relevant information in a location accessible to the rider.
Regarding claim 2, Abe lacks a control device configured to control a control state of a motor that assists propulsion of a bicycle. The control device of Abe controls a number of bicycle functions, but does not specifically teach a motorized drive. The control device of Hamann is configured to control a control state of a motor 202 that assists in propulsion of the bicycle. 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 Abe bicycle with electric motor assist controlled by the communication apparatus, in view of the teachings of Hamann, with a reasonable expectation of success, in order to assist the user in propelling the bicycle, thereby alleviating rider fatigue and allowing the rider to extend the range achievable by the rider on a given bicycle.
Regarding claim 5, wherein the wireless communicator 46 is attached to the housing 72 of Abe (see Abe, Figures 4 and 5).
Regarding claim 6, the wired communicator 44, 48, 50, is attached to the housing 72 (see Abe, Figures 4 and 5).
Regarding claim 7, the wireless communicator of Abe is configured to transmit the information to be displayed on an external device (on the cycle computer CC).
Regarding claim 8, the information of the wireless communicator of Abe includes information for indicating a control state of the shifting device (see para [0048], lines 1-3).
Regarding claim 9, the wired communicator includes a power line communication circuit (see Abe cables C1-C7).
Regarding claims 10 and 11, Abe teaches a first connector 48 and a second connector 50 (see Figures 4 and 5) electrically connected to the wired communicator 44 and connectable to a first electrical cable C7 and a second cable C6, the second connector being connected in parallel to the first connector.
Regarding claim 12, the combination teaches that the input is operatively coupled to the wired communicator that transmits a control signal to change a control state of the motor in response to the input being operated.
Regarding claim 14, the indicator (display 10 of Hamann) has light emitting elements configured to indicate the information (see Hamann para 0039]).
Claim(s) 3 and 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Abe and Hamann as applied to claim 1 above, and further in view of Kuroda (PGPub 2014/0290411).
Regarding claims 3 and 4, the combination is unclear as to an input being attached to the housing.
Kuroda teaches an input (mode button 20a) attached to the housing of communicator 20 (see Figures 2 and 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a mode selection button on the housing of the wireless communicator of the combination, in view of the teaching of Kuroda, with a reasonable expectation of success, in order to provide select user input at the communicator.
Response to Arguments
Applicant's arguments filed 11/24/2025 have been fully considered but they are not persuasive.
Applicant has amended claim 1 to recite a housing “configured to be attached to a frame of the bicycle”. Both of the Abe and Hamann references teach this feature. Abe shows the communicator 12 mounted to the down tube 14a of the frame 14 (see Figure 1). Hamann teaches an electronics enclosure 258 for communicator 104 is mounted at a convenient viewing location, including the “top tube of the bicycle frame” (para [0041]).
Applicant argues that the Hamann does not teach a wireless communicator configured to receiver information from a device remotely located from the control device, an indicator disposed on the housing, and the indicator being configured to indicate the information. The examiner disagrees.
Specifically, applicant argues that Hamann lacks an indicator (the display 106 of Hamann) that displays information from the user input device. Applicant essentially asserts that all of the information communicated to the display is received from sensors and none of the displayed information is received from the user input. He examiner disagrees. Hamann teaches that the display 106 is connected to the wireless communicator 104 (Hamann’s opposing force processor 104; para [0039]) and the communicator 104 receives information from sensors and from user input 120 (Figure 1). The display 106 presents information about vehicle speed, cadence…and other data (para [0039]). Hamann does not indicate that only sensed information is displayed, but rather it provides examples of such information, without putting any limitations of the content. In para [0041], Hamann states that input parameters 124 from the user input include vehicle speed, cadence and other information (para [0042]) and the input can be changed based on user preference. Display of preferences is required in order to change those preferences and to verify that the information has been entered correctly. Hamann teaches that at least some of the input selections must be available to the user through the display in order for user input to be monitored and controlled.
Applicant also argues that the user input 120 is not clearly remote from the communicator (processor 104 of Hamann). The examiner disagrees. Hamann teaches “a smart phone in wireless communication with the opposing force processor 104” (para [0040], last two lines). A smart phone is a separate, portable, multi-use device that typically remains with the user. Even if the communication device 104 included some kind of docking connection (which is not presently taught by Hamann), the wireless connection to the smart phone creates a remote connection that would also be available for user input. One of ordinary skill in the art would necessarily perceive the teaching of a smart phone in wireless communication to mean a user input that is remote from the communication device at least some of the time. It is also noted that Abe explicitly teaches a user input device CC that is remotely spaced from the communicator 12 (see Abe Figures 1 and 2).
Applicant argues that the Hamann display is “in the electronics enclosure” rather than “on the electronics enclosure”, so it fails to meet the claim language. The examiner disagrees. Hamann teaches the display 106 is “connected to the opposing force processor 104” (para [0039], lines 1-2) and includes a liquid crystal display, light emitting diodes, etc. To be a “display” it must be visible to the user and cannot be enclosed within the housing. It would not make sense to enclose a device that is specifically provided to convey visual information to the rider inside a housing that would obscure its ability to “display” information and make it unusable for its intended purpose. Also, even a display mounted in a housing is on the housing (“on” the inside of the housing).
On page 9 of applicant’s remarks, reference to the speed sensor 186 as the user input is unclear and does not appear to based on the present rejection. Hamann clearly teaches controlling bicycle components, such as motor power, based on both sensed input (a speed sensor, described in para [003], for example) and a user input (user input of speed [0042]).
Therefore, applicant’s arguments are not convincing and the rejection is being maintained.
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 Anne Marie M. Boehler whose telephone number is (571)272-6641. The examiner can normally be reached Monday-Friday, 8-5pm.
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/ANNE MARIE M BOEHLER/Primary Examiner, Art Unit 3611 /ab/
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