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 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.
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 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-15 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 § 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.
Claim(s) 1 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sapir (WO2010/140,143).
Regarding claim 1, Sapir teaches a three-dimensional folding frame, comprising: a first pivot portion 40 for providing a front folding wheel frame (support for front wheel 32) with movable folding (see Figure 3F); a second pivot portion 46 for providing a rear folding wheel frame (support for rear wheel 34) with movable folding (see Figure 2C); a crossbar 50 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 42 and is movable relative to the crossbar 50 (movable about the wheel steering axis) to form a first three-dimensional movement freely foldable state; the crossbar 50 is movably connected to the rear folding wheel frame by means of the second pivot portion 46; the rear folding wheel frame is rotatable about the second pivot portion 46 and is movable relative to the crossbar (movable about hinge 44) to form a second three-dimensional movement freely foldable state.
Regarding claims 11-13, Sapir teaches the folding mechanism on an electric vehicle (electric motor 80 drive rear wheel 34; page 9, lines 27-29), a bicycle (two wheeled vehicle) and a motorcycle (two wheeled vehicle having motor 80 driving rear wheel 34).
Claim(s) 1, 3-6, 8, 9, 12, 15, and 18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Warne (GB 2414972).
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).
Regarding claim 3, Warne teaches that each of the front folding wheel frame 3 and the rear folding wheel frame 4 is provided with a supporting shaft (cylindrical part 35 of portion 32, attached to front wheel frame 3, forms a hollow shaft that movably supports crossbar 2, see Figure 11 and page 7, lines 27-35; cylindrical part 47 of portion 44, attached to the rear wheel frame 4, forms a hollow shaft that movably supports the crossbar 2, see Figure 13, page 8, lines 14-25), the crossbar is movably engaged with the supporting shafts, the three-dimensional folding frame reaches a minimum storage volume when the front folding wheel frame and the rear folding wheel frame move to one side of the crossbar on a Z axis (see Figure 4, in the folded condition, where the volume in at its minimum, the front and rear folding wheel frames 3, 4, are shifted laterally relative to the crossbar 2).
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 5 and 8, Warne teaches a three-dimensional folding frame, comprising: a folding wheel frame 1 comprising a front folding wheel frame 3 and a rear folding wheel frame 4; a front wheel 11 connected to the front folding wheel frame; a rear wheel 14 connected to the rear folding wheel frame (see Figure 1); wherein the front folding wheel frame is foldable at different functional positions at a front end of a crossbar 2 by means of a first three-dimensional movement of a first pivot portion 16, and the rear folding wheel frame is foldable at different functional positions at a rear end of the crossbar by means of a rotational movement of a second pivot portion 17; the first pivot portion is capable of performing a translational movement while rotating (see page 6, lines 1-5; 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).
Regarding claim 6, Warne teaches the front folding wheel frame is provided with a supporting shaft, the crossbar is movably engaged with the supporting shaft, and the three-dimensional folding frame reaches a minimum storage volume when the front folding wheel frame moves to one side of the crossbar on a Z axis (discussed above with respect to claim 3).
Regarding claim 8, Warne teaches all of the claimed structure, as discussed above, and also teaches the rear folding wheel frame 4 is foldable at different functional positions at a rear end of the crossbar by means of a second three-dimensional movement of a second pivot portion 17; the second pivot portion is capable of performing a translational movement while rotating (see page 6, lines 5-9).
Regarding claim 9, Warne teaches the rear folding wheel frame is provided with a supporting shaft, the crossbar is movably engaged with the supporting shaft, and the three-dimensional folding frame reaches a minimum storage volume when the rear folding wheel frame moves to one side of the crossbar on a Z axis (discussed above with respect to claim 3).
Regarding claims 12, 15, and 18, Warne teaches the three-dimensional folding frame on a bicycle (see Figure 1 and title of invention “folding bicycle”).
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.
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sapir in view of Yap (UPSN 8,894,084, cited by applicant).
Regarding claim 2, Sapir shows a third pivot portion 42 (Figure 3A) for folding a folding steering support 28 and a fourth pivot portion 140 (lockable hinge 140, as seen in Figure 3A); a handlebar vertical rod holder (hinged holder for rod 28), the handlebar vertical rod holder is connected to the frame 22 by means of the third pivot portion 42 to perform three-dimensional folding on the handlebar vertical rod 28, the crossbar 22 comprises a first folding arm 100 and a second folding arm 22 where the fourth pivot portion 140 divides the cross bar into two folding arms; the first folding arm and the second folding arm are switchable between a folded state (figure 3L) and an unfolded state (Figure 3A) by means of rotation of the fourth pivot portion 140.
Sapir shows the third pivot portion connected to the crossbar/mainframe 22 rather than to the front folding wheel frame (frame that holds the front wheel).
Yap shows a folding bicycle frame having a front wheel folding frame 102a and a pivot portion (steering tube hinge 114). The pivot portion 114 connects a handlebar vertical rod holder (steering tube 113) to the front wheel folding frame 102a.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to position the third pivot portion of Sapir between the front wheel folding frame and the handlebar vertical rod holder, in view of Yap, with a reasonable expectation of success, in order to simplify the folding structure while retaining the ability to fold the handlebar structure.
Claim(s) 7 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Warne in view of Gaddi (USPN 4,830,133).
Regarding claims 7 and 10, Warne lacks a hinge holder for a saddle rod on the crossbar, the hinge holder being connected to a saddle rod so that the saddle rod is foldable close to the crossbar; and a saddle holder being foldable relative to the saddle rod by means of a hinged locking portion.
Gaddi teaches a folding motorcycle having a front pivot portion 7, a rear pivot portion 11, a crossbar 10 and a hinge holder at on the crossbar 10, and the hinge holder is connected to a saddle rod 32 so that the saddle rod is foldable close to the crossbar 10 (Figure 2); a saddle holder (at the pivotal connection between the saddle 33 and saddle rod 32) being foldable relative to the saddle rod by means of a hinged locking portion (support 32 and saddle are articulated relative to each other, Figures 1 and 2, and the connection is “blockable”, meaning lockable, in position; col. 3, lines 4-12).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention, to lockably hinge or pivotally connect the saddle tube to the crossbar and also lockably hinge the saddle to the saddle tube of Warne, in view of Gaddi, with a reasonable expectation of success, in order to configure the frame more compactly when folded.
Claim(s) 11, 13, 14, 16,17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Warne in view of Demond (PGPub 2021/0380192, cited by applicant).
Regarding claims 11, 13, 14, 16, 17, and 19, Warner 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 Warne 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lee, Niitsu, Csizmadia, Tratner. Herbert, Lin’449 and Lin ‘434 teach folding cycle frames.
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/