DETAILED CORRESPONDENCE
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
The ADS submitted on 9/15/2023 attempts to claim domestic benefit to “provisional” application # 17/803,948. First, it is noted that 17/803,948 is a nonprovisional application, so domestic benefit cannot be sought from a nonprovisional application. Second, no disclosure or claims were filed with application 17/803,948, so there is no content in the prior application for which any benefit of an earlier date could be applicable.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign(s) mentioned in the description: “013”.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
The claim set filed on 2/20/2024 fails to comply with 37 CFR 1.121(c) for failing to include status indicators indicating which claims were original, amended, new, etc.
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 1-7 are rejected as failing to define the invention in the manner required by 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
The claim(s) are narrative in form and replete with indefinite language. The structure which goes to make up the device must be clearly and positively specified. The structure must be organized and correlated in such a manner as to present a complete operative device. The claim(s) must be in one sentence form only. Note the format of the claims in the patent(s) cited.
Claims 1-7 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 pre-AIA the applicant regards as the invention.
Claims 1-7 fail to recite a transitional phrase, e.g. “comprising”, “consisting”, “having”, “including”, etc. Accordingly, it is unclear whether any structure recited in the claims is an inclusive construction (i.e. not excluding additional, unrecited elements) or an exclusive construction (i.e. excluding additional, unrecited elements). Accordingly, the scope of the claims are unable to be determined accurately.
Claim 1 recites, “the… buoyancy emulator is a revolutionary breakthrough”. It is unclear what structure makes the device “revolutionary”, as no particular structure is recited. Rather, only the environment is recited, e.g. a rear disc brake caliper for two wheeled cycle suspensions. Further, the term “revolutionary” is deemed to be a relative term, and it is unclear how different the device needs to be in order to be “revolutionary” with regard to other devices.
Claim 2 recites that the invention “makes the two wheeled cycle emulate buoyancy or float over un-even, harsh terrain”. This recites a result to be achieved, rather than a particular structural device. It is unclear what structure carries out this effect.
Claim 2 recites, “the invention”. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites, “the two wheeled cycle”. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites, “professional racers agree”. The term “professional” constitutes a relative term of degree, and it is unclear what level of training or experience is necessary to be deemed “professional”, and the specification provides no standard for what constitutes a “professional” racer. Second, it is unclear if professional racers “agreeing” is part of the claimed invention or not, in other words, do professional racers have to “agree” in order to practice the invention?
Claim 3 recites that the buoyancy is emulated “by keeping the rear wheel in better contact with the firmament by converting the adverse rotational torque and leverage of the swing-arm and disc brake into a straight pull transferring to the frame safely so as not to negatively effect the reciprocation of the front and rear suspension over harsh terrain, improving the ride comfort and quickening the deceleration during rear brake apply, safely”. This description is a result to be achieved by the invention, but it is unclear by what particular structure this result is performed by.
Claim 4 recites the purpose for the invention, i.e. “a way to attach a rear disc brake caliper above the swing-arm”, but does not recite how this is done, or by what structure. Further, it is unclear if this claim is attempting to recite a method of assembling a brake caliper, or a structure of a brake caliper.
Claim 5 recites, “that can also be used as a hydraulic stay-rod/brake line”. It is unclear if the hydraulic stay-rod/brake line is being positively recited, or whether this is merely a capability.
Claim 5 recites, “eliminating the industry standard, above the swing-arm, top heavy brake-line”. It is believed that the industry standard is the “above the swing-arm, top heavy brake line”, but it is somewhat unclear. Further, it is unclear if “eliminating” constitutes a method step to be performed to practice the invention.
Claim 6 recites a capability or field of use of the invention (e.g. aircraft), but it is unclear by what structure the capability is possible. Further, the claim recites “most disc brake applications” as opposed to “all”. It is unclear what is meant by “most” disc brake applications would be, such that the scope of the claim is ascertainable.
Claim 7 in its entirety recites, “All rights reserved”. It is unclear what scope of protection is being sought by this claim. In other words, it is unclear what is being claimed as the present invention by claim 7. No structure is recited such that the claim particularly points out what subject matter the applicant regards as the invention.
Additionally, the following claim terms lack sufficient antecedent basis:
(claim 1): “the rear disc brake caliper buoyancy emulator”
(claim 2): “the invention”
(claim 2): “the two wheeled cycle”
(claim 3): “the invention”
(claim 3): “the cycle”
(claim 3): “the rear wheel”
(claim 3): “the firmament”
(claim 3): “the adverse rotational torque and leverage”
(claim 3): “the swing-arm and disc brake”
(claim 3): “the frame”
(claim 3): “the front and rear suspension”
(claim 4): “the invention”
(claim 4): “the swing-arm”
(claim 4): “the rear axle”
(claim 5): “the invention”
(claim 5): “the swing-arm”
(claim 5): “the two floating stray-rod swivels”
(claim 5): “the front and rear”
(claim 5): “the industry standard, above the swing-arm, top heavy brake-line”
(claim 6): “the invention”
(claim 6): “the front or rear”
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claim 7 does not fall within at least one of the four categories of patent eligible subject matter because no structure is recited, nor are any method steps recited.
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 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.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) based upon a public use or sale or other public availability of the invention.
The specification makes reference to Application 18/143,171, filed on 5/4/2023 by the instant Inventor. The ‘171 application discloses the same invention as that presently disclosed and claimed, see fig. 4 of the ‘171 application, for example. The specification of the ‘171 application in paragraphs 0010-0011 states:
“[0010]Mr. Raymond Walter Bryson, the inventor, tested the invention with good results at the Area Regional qualifiers for the 2021 Amateur National's, the largest MX national event in the world and caught the attention of the Honda tent. Honda has maintained a long losing streak for the last 20 +/- years.
[0011] With no permission to use or manufacture my invention, Honda began winning races again by using my invention secretly. He later allowed Chase Sexton, a US racer, permission to help showcase the invention with good results.”
This disclosure describes that the instant invention was tested (i.e. installed on a bike and used) in 2021, which is more than 1 year before the effective filing date of the presently claimed invention of 9/15/2023. This use was described as being at “the largest MX national event in the world”. This is deemed a public use or other public availability, for multiple reasons:
1) This type of event is a ticketed event complete with spectators, officials, other competitors, photographers, etc. and are available for attendance by the public in general.
2) This disclosure states that the use of this invention “caught the attention of the Honda tent”. Since another entity other than the inventor was able to observe the use of the present invention and subsequently steal or copy it, this indicates that the use of the invention was public, as opposed to a private use
3) This use was not merely experimental, since Honda was using the claimed invention for “winning races… by using my invention”.
In sum, based on the current evidence of record, the presently claimed invention was “in public use” or “otherwise available to the public” more than one year before the effective filing date of the claimed invention.
Claims 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Isono (U.S. 4572317).
Regarding claims 1-7, Isono discloses (as best understood in light of the 112(b) issues identified above) a rear disc brake caliper assembly (fig. 6) including a rear wheel (3), a caliper (6), a swing arm (2’), caliper mount (7’ and 7’a collectively), and a torque rod (54) mounted to the caliper mount and the frame (via 55a), where the caliper is above the swing arm and the torque rod is below the swing arm, such that when the caliper applies the brake, the caliper mount bracket experiences a torque in the counter-clockwise direction, thereby causing a pulling force on the torque rod, such force having the effect of emulating buoyancy.
This disclosure is believed to fully encompass the presently claimed invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID MORRIS whose telephone number is (571)270-3595. The examiner can normally be reached Monday thru Friday; 8:30 AM - 5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi can be reached at (571) 272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID MORRIS/
Primary Examiner
Art Unit 3616
/DAVID R MORRIS/Primary Examiner, Art Unit 3616