DETAILED ACTION
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 .
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claim 20 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claim 20 of co-pending application No. 18385258. This is a statutory double patenting rejection.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-19 of co-pending Application No. 18385258. The co-pending applications both describe a kickstand with an integrated charging device.
Claim 1 of the current application is rejected as nonstatutory double patenting with claim 1 of co-pending application.
Claim 2 of the current application is rejected as nonstatutory double patenting with claim 2 of co-pending application.
Claim 3 of the current application is rejected as nonstatutory double patenting with claim 3 of co-pending application.
Claim 4 of the current application is rejected as nonstatutory double patenting with claim 4 of co-pending application.
Claim 5 of the current application is rejected as nonstatutory double patenting with claim 5 of co-pending application.
Claim 6 of the current application is rejected as nonstatutory double patenting with claim 6 of co-pending application.
Claim 7 of the current application is rejected as nonstatutory double patenting with claim 7 of co-pending application.
Claim 8 of the current application is rejected as nonstatutory double patenting with claim 8 of co-pending application.
Claim 9 of the current application is rejected as nonstatutory double patenting with claim 9 of co-pending application.
Claim 10 of the current application is rejected as nonstatutory double patenting with claim 10 of co-pending application.
Claim 11 of the current application is rejected as nonstatutory double patenting with claim 11 of co-pending application.
Claim 12 of the current application is rejected as nonstatutory double patenting with claim 12 of co-pending application.
Claim 13 of the current application is rejected as nonstatutory double patenting with claim 15 of co-pending application.
Claim 14 of the current application is rejected as nonstatutory double patenting with claim 13 of co-pending application.
Claim 15 of the current application is rejected as nonstatutory double patenting with claim 14 of co-pending application.
Claim 16 of the current application is rejected as nonstatutory double patenting with claim 15 of co-pending application.
Claim 17 of the current application is rejected as nonstatutory double patenting with claim 16, 19 of co-pending application.
Claim 18 of the current application is rejected as nonstatutory double patenting with claim 17 of co-pending application.
Claim 19 of the current application is rejected as nonstatutory double patenting with claim 18 of co-pending application.
This is a provisional nonstatutory double patenting rejection.
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 1-16, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada et al (US 6150794).
RE 1, Yamada discloses an electric motorbike comprising: a motorbike frame (1); a battery pack (20); a motorbike stand (15, 17) movable couple to the motorbike frame (fig 8, 10), and a charging device (6) integrated into the motorbike stand (col 10 ln 1-10).
Re 2, where the motorbike stand comprises a kickstand (Fig 8, 10, col 9 ln 57—67).
RE 3, where the charging device is an inductive charging device (col 3 ln 6-19).
Re 4, the charging device including a secondary charging coil (50).
RE 5, comprising an inductive charger (4) having a primary charging coil (30) that inductively couples to the inductive charging device (6) (col 7 ln 21-43).
RE 6, where the inductive charger (4) is a charging mat (fig 13, 43).
RE 7, where the charging mat comprises multiple charging coils (Fig 30, col 15 ln 16-21).
RE 8, where the charging device is a contact charging device (col 7 ln 21-43).
RE 9, Yamada discloses an electric motorbike comprising: a motorbike frame (1); a battery pack (20); a bike kickstand (15, 17) movably coupled to the motorbike frame; and a charging device (6) integrated into the motorbike kickstand, the bike kickstand operably positioned to both support the electric bike when not in use and for charging the battery pack (col 9 ln 58-col 10 ln 10).
RE 10, where the charging device is an inductive charging device and includes a secondary charging coil (col 3 ln 6-19).
Re 11, where the bike kickstand (15, 17) includes a support member that contacts an external charger, the support member including the charging device (fig 12).
RE 12, where the charging device (6) is an inductive charging device having a secondary charging coil (50).
RE 13, where the charging device (6) electrically couples to the battery pack through the motorbike kickstand (col 10 ln 1-10).
RE 14, where the kickstand (15, 17) includes a first support member (15a, 17a) and a second support member (15b, 17b), and when in an operating position the first support member extends downward from the bike, and the second support member extends outward from the first support member (fig 6, 10).
Re 15, where the second support member includes an inductive charging device having a secondary coil (50) (Fig 7).
RE 16, where the inductive charging device is electrically coupled to the battery pack through the first support member (col 10 ln 1-10).
Re 20, Yamada discloses an electric motorbike comprising: a motorbike frame (1); a battery pack (20) coupled to the motorbike frame for powering the electric bike; a bike kickstand (15, 17) movably coupled to the motorbike frame; an inductive charging device (6) integrated into the motorbike kickstand, the motorbike kickstand operably positioned to both support the electric bike when not in use and includes the inductive charging device for inductively charging the battery pack (Fig 8, 10); and an inductive charging mat (Fig 13, 43) including a charging surface (4) that inductively couples to the inductive charging device, the inductive charging mat comprising a charging mat multiple primary charging coils (Fig 30, col 10 ln 1-10, col 15 ln 16-21).
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 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(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 17-19 are rejected under 35 U.S.C. 103(a) as being unpatentable over Yamada et al in view of Dambacher (US1278113).
Yamada discloses an electric motorbike comprising a kickstand, where the kickstand is generally U shaped (Fig 10) and includes a first support member (15a, 17a), a second support member (15b, 17b), and the charging device (6); and when in an operating position the first support member and second support member extend downward from the bike (Fig 10), and the charging device extends between the first support member and the second support member in a charging position (Fig 10, 12), and where the charging device includes an inductive charging device having a secondary coil (50).
Yamada fails to disclose the kickstand including a cleaning device movable along the second support member to clean a contact surface of the inductive charging device, a cleaning device coupled to the bike frame for cleaning a contact surface of the charging device when the kickstand is moved between an up position and a down operating position.
However, Dambacher teaches a motorcycle including a U-shaped stand (10) swinging downward in a support position on the ground and rearward/upward to engage with the spring catch (35) along the brace (12) (disclosure).
Given the teachings of Dambacher, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the kickstand of Yamada with a cleaning device coupled to the frame, and movable along the second support member to clean a contact surface of the inductive charging device.
Doing so would keep the second support member of the kickstand secured, protected, and covered after pivoting upwardly/rearwardly.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christle I. Marshall whose telephone number is (571) 270-3086. The examiner can normally be reached on Monday – Friday 7:30AM - 4:00PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Steven Paik can be reached on (571) 272-2404. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Christle I Marshall/
Primary Examiner, Art Unit 2876
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