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 3, 6, and 9 have been canceled.
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, 2, 4, 5, 7, 8, and 10-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 11,708,123. Although the claims at issue are not identical, they are not patentably distinct from each other because all of the presently claimed elements are taught by the patent claims.
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 7 and 10 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.
Claim 7 depends from canceled claim 6. For the purpose of this Office Action, it is assumed that applicant meant for claim 7 to depend from claim 5, but correction is required.
Claim 10 depends from canceled claim 9. For the purpose of this Office Action, it is assumed that applicant meant for claim 10 to depend from claim 8, but correction is required.
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, 4, 5, 7, 8, 10, 12, 15, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 02158267 to Yang in view of GB 2414972 to Warne.
Regarding claims 1, 5, and 8, Yang teaches a three-dimensional folding frame (Figures 22, 23, and 28, in particular), comprising: a first pivot portion (hinge 16) for providing a front folding wheel frame (front pipe/head tube 15 carrying front fork 8) with movable folding; a second pivot portion (hinge or universal joint 26; Figure 23) for providing a rear folding wheel frame with movable folding; a crossbar 1 is movably connected to the front folding wheel frame by means of the first pivot portion, and the front folding wheel frame is rotatable about the first pivot portion and is movable relative to the crossbar to form a first three-dimensional movement freely foldable state; the crossbar 1 is movably connected to the rear folding wheel frame by means of the second pivot portion 26; the rear folding wheel frame is rotatable about the second pivot portion 26 and is movable relative to the crossbar to form a second three-dimensional movement freely foldable state; wherein the three-dimensional folding frame comprises a third pivot portion (hinge 27; Figure 22), the front folding wheel frame is connected to a handlebar vertical rod holder (handlebar tube 12; Figure 28), the handlebar vertical rod holder 12 is connected to the front folding wheel frame 15 by means of the third pivot portion 27 to perform three-dimensional folding on the handlebar vertical rod, and the handlebar vertical rod holder is rotatable in a Z direction while rotating in X and Y directions (the handlebar rod holder 27 rotates in an X-Y plane defined by the pivot portion 27 and rotates in a Z direction about the steering axis); and wherein each of the front folding wheel frame and the rear folding wheel frame is provided with a supporting shaft (transverse hinge pin), the crossbar is movably engaged with the supporting shafts, the three-dimensional folding frame reaches a minimum storage volume in response to the front folding wheel frame and the rear folding wheel frame moving.
Yang does not teach that the front folding wheel frame and rear folding wheel frame move to one side of the crossbar on an Z axis, although it does teach that overlapping the wheels, as in Figure 12, provides a more contact folded arrangement.
Warne teaches a three-dimensional folding frame 1, comprising: a first pivot portion 16 for providing a front folding wheel frame 3 with movable folding; a second pivot portion 17 for providing a rear folding wheel frame 4 with movable folding; a crossbar 2 is movably connected to the front folding wheel frame by means of the first pivot portion 16, and the front folding wheel frame is rotatable about the first pivot portion and is movable relative to the crossbar to form a first three-dimensional movement freely foldable state (transverse hinge 16 “allows the subframe 3 to pivot with respect to the main frame 2 and simultaneously to undergo lateral translation” with respect to the main frame 2; page 6, lines 1-5); the crossbar 2 is movably connected to the rear folding wheel frame 4 by means of the second pivot portion 17; the rear folding wheel frame is rotatable about the second pivot portion and is movable relative to the crossbar to form a second three-dimensional movement freely foldable state (page 6, lines 4-4-8).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to configure first and second pivot portions of Yang with lateral movement at the hinge as the frames are rotated to their folded positions, in view of Warne, with a reasonable expectation of success, to provide fold the wheels to the sides of the crossbar for a more compact folded arrangement.
Regarding claim 4, the front folding wheel frame is engaged with the crossbar by using a first block that joints with a first groove and a quick detachable structure, the rear folding wheel frame is engaged with the crossbar by using a second block that joints with a second groove and a quick detachable structure, so as to realize quick and accurate alignment and automatic locking, and avoid shaking during driving.
Regarding claim 4, Warne teaches the front folding wheel frame 3 is engaged with the crossbar 2 by using a first block (first pivot portion 16 has a ramped projection 22 formed by undercut 25, as seen in Figure 7) that joints with a first groove (undercut 28, seen in Figure 7) and a quick detachable structure (locking mechanism including a spring 37 that automatically moves the pivot portion in its engaged and bolt 39/threaded hole 38 structure to further lock the joint, shown in Figure 11; page 7, lines 7-18, 26-33, page 8, lines 5-12), the rear folding wheel frame is engaged with the crossbar by using a second block that joints with a second groove (Figures 11, 12, joint 17 has ramps and undercuts that operate like joint 16). Biasing spring 49 automatically engages and locks the second pivot portion (page 8, lines 14-25).
Regarding claims 7 and 10, Yang teaches the crossbar 1 is provided with a hinge holder (Figure 23 shows the saddle tube 5 and saddle 9 folded down onto the crossbar 1; Figure 28 shows a triangular hinge holder on the upper surface of crossbar 1 for a foldable saddle tube; Figure 35 shows crossbar 1 holding hinge 4 for foldable saddle tube 5), and the hinge holder is connected to a saddle rod (saddle rod 5, seen in Figure 35, for example) so that the saddle rod is foldable close to the crossbar (see Figure 23); and a saddle holder 25 (seen in Figure 32) is foldable relative to the saddle rod 5 by means of a hinged locking portion 106 (Figure 32 shows the saddle 9 on saddle holder 25 pivotally connected to the saddle rod 5 at hinge 24 and having a locking device 106 that locks the saddle holder in an extended position in Figure 32 and in a folded position in Figure 33).
Regarding claims 12, 15, and 18, both Yang and Warnke teach bicycles.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang and Warnke as applied to claims 1, 4, 5, 7, 8, 10, 12, 15, and 18 above, and further in view of Huang (PGPub 2010/0230927).
Regarding claim 2, the combination lacks a fourth pivot portion where the crossbar comprises a first folding arm and a second folding arm and the first folding arm and the second folding arm are switchable between a folded state and an unfolded state by means of rotation of the fourth pivot portion.
Huang teaches a bicycle having cross bar 11 with a first pivot portion 112 at one end for rotating a front folding wheel frame 14, a second pivot portion 113 at an its opposite end for rotating a rear folding wheel frame 19, a third pivot portion 112 for pivoting the handle bar, and a fourth pivot portion 111 between front and rear arms of the crossbar 11 for moving the folding arms between a folded state (Figure 4) and an unfolded state (Figure 1).
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 folding bicycle frame of Yang with a fourth pivot portion, in view of Huang, with a reasonable expectation of success, to provide an even more compact longitudinal dimension of the frame in its folded state.
Claim(s) 11, 13, 14, 16, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yang and Warnke as applied to claims 1, 4, 5, 7, 8, 10, 12, 15, and 18 above, and further in view of Demond (PGPub 2021/0380192, cited by applicant).
Regarding claims 11, 13, 14, 16, 17, and 19, the combination teaches the three-dimensional folding frame on a bicycle, but fails to specify that the frame could be used on an electric bicycle or a motorcycle.
Demond teaches a folding bicycle frame with foldable front and rear ends, a folding crossbar 46, 48, a saddle 108, and a handlebar 90. It teaches that the folding frame can be a bicycle with pedal power or, alternatively, be powered by a motor (para [0433], lines 8-9, “transmission may be driven instead by a motor such as motor 82”), making the vehicle an electric vehicle, specifically, an electric motorcycle.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to drive the combination bicycle using a motor rather than pedal power, making the vehicle an electric motorcycle, as taught by Demond, with a reasonable expectation of success, in order to configure the vehicle as a compact, foldable, motorized vehicle for ease of use for the rider.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 2, 4-5, 7-8, and 10-19 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/
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