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 .
Response to Amendment and Arguments
The amendment filed 7/20/2026 has been entered. Claims 1-3, 5-7, 9-12, 14-16 remain pending in the application.
Applicant’s arguments with respect to the rejection(s) under 35 USC 103 pertaining to Aoki have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of US20020120399A1 (“Morita”).
Applicant’s arguments in regards to Salsa and Eriksen are moot in light of the new grounds of rejection in view of Morita.
Applicant’s arguments regarding Walters, Garmin, and Core Electronics are not persuasive. Applicant argues that these references only pertain to data collection units and not motorbikes. In response to Applicant's argument that Walters, Garmin, and Core Electronics are non-analogous art, it has been held that the determination that a reference is from a non-analogous art is twofold. First, we decide if the reference is within the field of the inventor's endeavor. If it is not, we proceed to determine whether the reference is reasonably pertinent to the particular problem with which the inventor was involved. In re Wood, 202 USPQ 171, 174. In this case, the references and the present application pertain to data collection units regardless of the mounting locations these units function in the same capacity (on a motorcycle, mountain bike, boat, ATV, or enduro rally tower).
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 do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 1 and 14: “storage unit” (memory which can store data)
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-3, 5-6, 11-12, 14-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over US20020120399A1 (“Morita”) in view of WO2012029687A1 Aoki .
As per claims 1 and 14, Morita teaches
An Morita at least the abstract, FIG. 5, FIG. 6b, [0020])
While Morita does not explicitly disclose an enduro or motocross motorbike, Morita does teach a two wheeled motor vehicle (Morita abstract), which encompasses enduro and motocross motorbikes. *Examiner’s note: the applicant for the Morita reference (Honda) makes the CRF150/250 motocross bikes, as well as the CRF300L enduro bike.
Morita does not disclose, which Aoki teaches:
wherein the satellite signal receiver is arranged, preferably separately from the storage unit. (Aoki at least the abstract, FIG. 1)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with the aforementioned limitations taught by Aoki with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to improve the arrangement of a device on a motorcycle.
As per claim 2, Morita in combination with the other reference teaches the invention as described above. Morita additionally teaches:
wherein the satellite signal receiver is fastened above the mudguard and/or to the mudguard, Morita at least FIG. 6b)
As per claim 3, Morita in combination with the other reference teaches the invention as described above. Morita does not disclose, which Aoki teaches:
the satellite signal receiver has at least one first fastening device, which is formed to fasten the satellite signal receiver above the mudguard and/or to the mudguard, preferably detachably. (Aoki at least FIG. 9, 157, 163)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with the aforementioned limitations taught by Aoki with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to improve the arrangement of a device on a motorcycle.
As per claim 5, Morita in combination with the other reference teaches the invention as described above. Morita does not disclose, which Aoki teaches:
wherein the storage unit and the satellite signal receiver are implemented and/or arranged separately from each other. (Aoki at least the abstract, FIG. 3)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with the aforementioned limitations taught by Aoki with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to improve the arrangement of a device on a motorcycle.
As per claim 6, Morita in combination with the other reference teaches the invention as described above. Morita does not disclose, which Aoki teaches:
wherein the storage unit has at least one second fastening device, which is formed to fasten the storage unit to the enduro or motocross motorbike, preferably detachably. (Aoki at least: “GPS unit 64 is attached to the vehicle body frame via a buffer member”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with the aforementioned limitations taught by Aoki with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to improve the arrangement of a device on a motorcycle.
As per claim 11, Morita in combination with the other reference teaches the invention as described above. Morita does not explicitly disclose:
wherein the storage unit has at least one memory for storing the data collected by the satellite signal receiver and/or the at least one sensor and/or the externally received data.
Morita does teach the GPS unit being capable of processing the GPS signal. One of ordinary skill in the art would be motivated to reduce the teachings of Morita into practice by using conventional processors and at least temporary RAM to allow for the processing of the GPS signal. One of ordinary skill in the art would be capable of practicing the teachings of Morita with a reasonable expectation of success.
As per claim 12, Morita in combination with the other reference teaches the invention as described above. Morita does not explicitly disclose, which Aoki teaches:
wherein the data collection unit has at least one detachable power connection to the enduro or motocross motorbike and/or to a power source. (Aoki at least: “GPS unit 64 has, on the side, a power supply coupler 113 to which an external power supply is supplied, and an information exchange coupler 114 which exchanges information”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with the aforementioned limitations taught by Aoki with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to improve the arrangement of a device on a motorcycle.
As per claim 15, Morita in combination teaches the method for operating the data collection unit according to claim 14 in the enduro or motocross motorbike as described above (Morita at least the abstract, FIG. 5).
As per claim 16, Morita in combination teaches the method for operating the data collection unit according to claim 14 in the enduro or motocross motorbike as described above. Morita additionally teaches: arranging the satellite signal receiver on the enduro or motocross motorbike substantially centrally, on an upper side of the mudguard in front of the front fork. (Morita at least FIG. 6b). Morita does not disclose, which Aoki teaches:
arranging the satellite signal receiver on the enduro or motocross motorbike spatially separated from the storage unit. (Aoki at least the abstract, FIG. 9)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with the aforementioned limitations taught by Aoki with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to improve the arrangement of a device on a motorcycle.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morita and Aoki in view of Salsa Anything Cage ("Salsa") and US20220266939A1 Ericksen et al ("Ericksen").
As per claim 7, Morita in combination with the other reference teaches the invention as described above. Morita does not explicitly disclose:
the at least one second fastening device is formed to fasten the storage unit to a front fork, in particular to a fork leg, preferably detachably.
Ericksen teaches mounting an electronic device to a front fork leg (Ericksen at least FIG. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with mounting an electronic device on a fork leg taught by Ericksen with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to mount an electronic device like a sensor on a suspension fork to adapt the suspension tuning characteristics to the terrain (Ericksen [0020]). *Examiner’s note: assignee for the Morita reference, Honda, although known for motorcycles/enduro/motocross, made a mountain bike in 2003 called the RN01, thus one of ordinary skill in the art familiar with the Honda catalog would be motivated to combine teachings from the motorcycle arts with the teachings from the mountain bike arts.
Salsa teaches a mounting fastener designed for carrying a plurality of items on a front fork leg. Though the satellite signal receiver is preferably mounted in a configuration to maximize GPS signal by having a clear view of the sky above, the portion of the data collection unit that is the storage unit can preferably be arranged to be separate from the satellite signal receiver. The storage unit, not needing any particular mounting configuration for the storage unit to perform its duties, can be mounted anywhere on the single track vehicle as designed by one of ordinary skill in the art. Using the teachings of the images in Salsa (reproduced below), one of ordinary skill in the art could deduce that a single track vehicle has limited mounting points for accessory objects to the body of the vehicle that are not direct drivetrain/braking/steering/mobility components giving consideration for the placement of the rider and any displacement of the rider and suspension components. In reference to the Salsa reference, such mounting points would be including but not limited to: proximity of the rider’s seat, behind the handle bars, in front of the handlebars, or on the fork leg.
Given the finite number of possibilities and reasonable expectation of success it would have been obvious to try to one ordinarily skilled in the art, before the date of filing of the invention, to mount the storage unit on a fork leg. Thus in reduction to practice it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with mounting an object with detachable fasteners to a fork leg taught by Salsa with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to store an object out of the way of a rider’s body.
Claim(s) 9-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morita and Aoki in view of US7034747B1 Walters et al ("Walters").
Regarding claim 9, Morita in combination with the other reference teaches the invention as described above. Morita does not disclose:
wherein the data collection unit has an interface for transmitting external data and/or the collected data and/or data received from the vehicle, in particular for transmitting data to an external receiver and/or for receiving data from an external transmitter.
However, Walters teaches the aforementioned limitation (Walters at least the abstract: "wirelessly linking a GPS device…display").
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with the aforementioned limitations taught by Walters with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to separately place a GPS antenna in an appropriate location for signals and the processing unit with a display and user interface in an accessible location (Walters col 2).
Regarding claim 10, Morita in combination with the other reference teaches the invention as described above. Morita does not disclose:
wherein the interface is formed for the wireless transmission of data, in particular in accordance with the WLAN standard and/or Bluetooth standard.
However, Walters teaches the aforementioned limitation (Walters at least claim 19).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Morita with the aforementioned limitations taught by Walters with a reasonable expectation of success. One of ordinary skill would have been motivated to combine these references in order to separately place a GPS antenna in an appropriate location for signals and the processing unit with a display and user interface in an accessible location (Walters col 2).
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 OLIVER TAN whose telephone number is (703)756-4728. The examiner can normally be reached M-F 10-7.
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, Navid Mehdizadeh can be reached at (571) 272-7691. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/O.T./ Examiner, Art Unit 3669
/NAVID Z. MEHDIZADEH/ Supervisory Patent Examiner, Art Unit 3669
Prosecution Insights