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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
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 14-16 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, the information including information for indicating a control state of a shifting device configured to change a transmission ratio of the bicycle or information for indicating a control state of a motor configured to assist in propulsion of the bicycle; (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]). Hamann further teaches that the information includes a user input parameter 124 for acceleration response for control of the motor (para [0043]). User selected acceleration responses include different control modes for the motor (para [0043]; “a slow acceleration response 264, a medium acceleration response 266, a fast acceleration response 268”).
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, including information that the user inputs in order to inform the user regarding the current settings and reliably change those settings. Abe teaches the user input settings include gear shift settings and Hamann teaches user input settings include motor control modes.
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]).
Regarding claim 15, Abe teaches the user input includes a control state of a shifting device including a speed stage of the shifting device (para [0048]).
Regarding claim 16, Hamman teaches a user input including the control state of the motor includes a control mode of the motor (para [0042]; slow, medium, and fast acceleration response of the motor).
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 03/12/2026 have been fully considered but they are not persuasive.
Applicant argues that the prior art to Abe and Hamann fails to teach the claimed invention. Applicant argues that Abe lacks wireless transmission of information between a remote device and a wireless communicator. The examiner agrees that Abe lacks that feature, but maintains that Hamann teaches it. Applicant argues that Hamann fails to teach an indicator that indicates the information input from a remote device. The examiner maintains that displaying user input information is obvious in view of the references. As discussed previously, Hamann specifically teaches that the user input device 120 inputs information, such as vehicle speed, cadence, and rider power, to the power assist processor 102 through the opposing force processor 104. It also teaches, in para [0039], a display 106 connected to the opposing force processor 104 that displays information including vehicle speed, cadence, rider power and other information. Hamann does not limit that the display to only sensor generated information and one of ordinary skill in the art would understand that the information that is displayed, such as cadence or vehicle speed, for example, could come from sensors and user input. Hamann also teaches, in para [0043], that one user input parameter 124 is a motor acceleration control state selected from a set of motor response states (slow, medium and fast acceleration response), as now recited in claims 1 and 16. The control states selected via the remote device are important information that the user needs access to while riding in order to determine the next control input to apply. Therefore, it would have been obvious to one of ordinary skill to provide the Abe communication apparatus with an indicator/display on the communication apparatus that shows at least a control state of the motor, in view of Hamann, in order to inform the user of the running state of the vehicle and so that he has the information needed to determine his next control operation.
Therefore, applicant’s arguments are not convincing and the rejection is being maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tetsuka ‘073 teaches user input devices that wirelessly send information to a bicycle component controller. Indicators 48 display user input parameters including user input gear shift information.
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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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 /ab/
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