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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “a fixing element” and “a connection means” in claim 1, “a longitudinal holding element” in claim 7, and “a retaining element” in claim 14.
Regarding Claim 1, the phrase “fixing element” is understood as a 112f limitation because (A) “element” is a nonce/placeholder term, (B) “fixing” designates the function, and (C) there is no structure claimed, that can perform the function of “fixing”, in effect the phrase is understood the same as “means for fixing”. The specification does not seem to offer support for this limitation, see related 35 USC 112b rejection below.
Regarding Claim 1, the phrase “connection means” is understood as a 112f limitation because (A) the claim limitation uses the term “means”, (B) “connection” designates the function, and (C) there is a structure claimed, that can perform the function of “connection”, in effect the phrase is understood the same as “means for connecting. In view of the specification, the phrase will interpreted as a “connection ring” (Para 3 on Page 11) or equivalent.
Regarding Claim 7, the phrase “longitudinal holding element” is understood as a 112f limitation because (A) “element” is a nonce/placeholder term, (B) “holding” designates the function, and (C) there is no structure claimed, that can perform the function of “fixing”, in effect the phrase is understood the same as “means for holding”. In view of the specification, the phrase will interpreted as a sleeve (see first paragraph of page 12) or equivalent. See MPEP 2181 – I.
Regarding Claim 14, the phrase “retaining element” is understood as a 112f limitation because (A) “element” is a nonce/placeholder term, (B) “retaining” designates the function, and (C) there is no structure claimed, that can perform the function of “retaining”, in effect the phrase is understood the same as “means for retaining”. The specification does not seem to offer support for this limitation, see related 35 USC 112b rejection below.
Claim Rejections - 35 USC § 112
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 1-14 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 1, 3, 5, 10, 13 and 14, the phrase "in particular" or “preferably” renders the claims indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For examination purposes, the limitations after these phrases are considered optional.
Regarding claims, 1 and 14, the specification does provide a structure for the “fixing element” or the “retaining element”. For examination purposes, they are interpreted as any structure capable of performing the actions of fixing, or retaining, respectively.
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.
Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Duvivier (US 2011/0241301 A1).
Regarding claim 1, Duvivier teaches a steering system for bicycle handlebars comprising a steer tube (14) pivotably supported in a head tube (12) of a bicycle frame (2) via two bearing elements (60),
a holding element (24) fixed on the steer tube (Figure 3) in particular above the upper bearing element (an upper ball bearing 16, which can be seen in FIGS. 2 and 3, and a lower ball bearing, not shown, paragraph [0036]),
a fixing element (18) arranged between the two bearing elements (Figure 3), preferably for connecting to a steering stabilization means (optional), and
a connection means (32) connecting the fixing element to the holding element (Figure 3).
Regarding claim 2, Duvivier teaches that the holding element is fixed to the steer tube in a clamping manner (paragraph [0042]).
Regarding claim 3, Duvivier teaches that the connection means is designed as a rotatory connection for transmitting moments (paragraph [0048]), the connection being implemented in particular by form-fit (optional).
Regarding claim 4, Duvivier teaches that the connection means comprises a connection ring (33) surrounding the steer tube (Figure 3) and comprising protrusions and/or recesses (35a and) for a form-fitting rotatory connection, which cooperate with recesses and/or protrusions (19) of the fixing element (Figure 3 and paragraph [0050]).
Regarding claim 5, Duvivier teaches that the connection ring is connected to the holding element in particular in a form-fitting manner, in particular via protrusions and recesses (36a) provided in the connection ring, which cooperate with recesses and/or protrusions (27) provided in the holding element (Figure 3 and paragraph [0050]).
Regarding claim 7, Duvivier teaches that a longitudinal holding element (12a) for holding the fixing element in the axial direction of the steer tube (engagement of 12a with 18a with prevent downward movement in the axial direction, see Figure 3).
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.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duvivier (US 2011/0241301 A1) in view of McDonald et al. (US 2023/0074447 A1 hereinafter, McDonald).
Duvivier teaches the system of claim 1. However, Duvivier does not teach that the holding element (10) and/or the connection ring (62) comprise a recess (32, 34) for passing lines therethrough.
McDonald teaches that the holding element (90) and/or the connection ring (22) comprise a recess (92, 162) for passing lines (48) therethrough (paragraph [0023], [0029], Figures 1-6).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the invention, to modify Duvivier’s system, in view of McDonald, with a recess for passing lines therethrough, to protect the line from damage.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duvivier (US 2011/0241301 A1) in view of Ehrhard et al. (US 2014/0084563 A1 hereinafter, Ehrhard).
Duvivier teaches the system of claim 1. However, Duvivier does not teach that the holding element is designed as a first stop element and/or is connected to a first stop element, the first stop element comprising two stops and cooperating with a second stop element.
Ehrhard (Figure1) teaches that the holding element is designed as a first stop element (10) and/or is connected to a first stop element (10), the first stop element (10) comprising two stops (22, 24) and cooperating with a second stop element (26).
It would have been obvious to one of ordinary skill in the art, before the effective filling date of the invention, to modify Duvivier’s system, in view of Ehrhard, with two stops, to increase the steering reliability (paragraph [0007]).
Allowable Subject Matter
Claims 6, 8-10, and 13-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 6 recites that the connection ring (62) has an at least partly annular outer surface (68) on which the upper bearing element (60) abuts.
Claims 8-10 and 13-14 requires a steering stabilization means (80). Although Duvivier teaches a steering stabilization means (32), it is used to meet the requirement of another component (a connection means 62) of claim 1 and it would not be reasonable to use the same element (32) to meet two separate components (62 and 80).
Since the prior art (e.g. Duvivier) teaches steering system that lack said features, the prior art does not anticipate the claimed subject matter.
For illustration purposes, Fig 4 of the examined disclosure shows the steering system, which is different than the steering system taught by the prior art of record (Fig. 3 of Duvivier and Fig. 1 of Ehrhard, etc.).
Furthermore, it would not have been obvious to a skilled artisan to have modified the prior art in order to arrive at the claimed invention without resorting to impermissible hindsight.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The references noted on the attached PTO-892 form teach steering systems for bicycle handlebars of interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOSAM SHABARA whose telephone number is (571)272-5495. The examiner can normally be reached M-F 8 am-5 pm.
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/H.S./Examiner, Art Unit 3611 /VALENTIN NEACSU/Supervisory Patent Examiner, Art Unit 3611