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 .
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.
Claim 1-11 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, the terms "preferably" and “preferred” render the claim(s) indefinite because the claim(s) include(s) elements not distinctly claimed (those encompassed by "preferably" and “preferred”), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(c). Claims 2-11 rejected for being dependent from rejected claim 1.
Regarding claims 7, 9, 10, and 11, the phrase "in particular" renders the claim(s) indefinite because the claim(s) include(s) elements not distinctly claimed (those encompassed by "in particular"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Regarding claims 3, the phrase "the connector element comprise(s) an insertion opening through which the connector element can be inserted…for contact with the connector element" renders the claim indefinite because it is unclear how the connector element can be inserted into itself and contacting itself. Claims 4-6 rejected for being dependent from rejected claim 3.
Claim 10 recites the limitations "the battery terminals" and “the plurality of bicycle elements”. There is insufficient antecedent basis for this limitation in the claim as only one battery terminal and one bicycle element was claimed.
Claim Rejections - 35 USC § 102
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.
Claims 1-5, 7-9, and 11 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Calfee (US 9,615,472).
In re claim 1, Calfee discloses a bicycle element (as shown in Figure 4) comprising a bicycle frame element (62), a bicycle component (48) connected to the bicycle frame element, a battery terminal (where cables 38/162 connect to battery located in steerer tube, see column 2, lines 9-10) preferably provided at the bicycle frame element, a cable (38, 162) connected to the battery terminal, wherein the cable is arranged in the bicycle frame element and in the bicycle component (as shown in Figures 1, 2, and 4), and a holder element (28) connected to the bicycle component and/or designed as a bicycle component, which holder element fixes a connector element (40, as shown in Figure 5) connected to the cable.
In re claim 2, Calfee further discloses wherein the holder element fixes the connector element in a clamping manner (as shown in Figures 1-2).
In re claim 3, Calfee further discloses, as best understood (see 112 rejection above), wherein the holder element and/or the connector element comprise an insertion opening (76, as shown in Figure 5) through which the connector element can be inserted into the insertion opening for electric contact with the connector element (40).
In re claim 4, Calfee further discloses wherein the holder element is integrated in a headset of a steering bearing (52, as shown in Figure 2).
In re claim 5, Calfee further discloses wherein fixing the headset causes a clamping fixation of the connector element (as shown in Figure 2).
In re claim 7, Calfee further discloses wherein at least in the bicycle frame element, in particular in a down tube, the cable is arranged in a cable duct (within region 24 as shown in Figure 1). The Examiner notes that due to the “in particular” language, the “down tube” location is not required by the claim.
In re claim 8, Calfee further discloses wherein the cable duct extends at least to the steer tube, starting from the battery terminal (as shown in Figures 2 and 4).
In re claim 9, Calfee further discloses wherein the cable is routed from the battery terminal through a bicycle frame element, in particular the down tube and/or the steer tube (62), into the holder element receiving the connector element (as shown in Figure 2).
In re claim 11, Calfee further discloses a bicycle system, in particular a bicycle, comprising a single bicycle element of claim 1 (as shown in 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 10 is rejected under 35 U.S.C. 103 as being unpatentable over Calfee.
In re claim 10, Calfee discloses a bicycle system, in particular a bicycle, comprising a plurality of bicycle elements of claim 1 comprising a single battery terminal for a single bicycle element (as shown in Figures 1-6), but does not disclose wherein the battery terminals of the plurality of bicycle elements are one and the same battery terminal. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use the battery terminal to power a plurality of bicycle elements, since is has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ8.
Allowable Subject Matter
Claim 6 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: The specific limitations of “wherein the holder element has a passage opening in which an elastically deformable clamping element is arranged which cooperates with the connector element and/or is a part of the connector element” is not anticipated or made obvious by the prior art of record in the examiner’s opinion.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. The references cited on the attached PTO-892 teach bicycle cable/wire elements of interest.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael R Stabley whose telephone number is (571)270-3249. The examiner can normally be reached on M-F 9-5:30.
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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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/MICHAEL R STABLEY/Examiner, Art Unit 3611 /VALENTIN NEACSU/Supervisory Patent Examiner, Art Unit 3611