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
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 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 12-22 of copending Application No. 18/015063 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim a pedal unit attachable/detachable training bicycle comprising: a bicycle frame comprising a receiving member provided at bottom of a seat tube to connect a pedal unit; the pedal unit is configured to detachably attach to the receiving member; a chain threaded between the pedal unit and a rear wheel; wherein the pedal unit rotatably retains a pedal crank comprising an axially attached chain wheel and incorporates a connector configured to connect to the receiving member, and the chain is configured to attachably/detachably connect the pedal unit and chain to the bicycle frame upon being wrapped around the chain wheel and a rear sprocket installed on the rear wheel; and wherein the bicycle frame is configured to enable a seat stay on a side of the chain wheel to be freely attached to and detached from the bicycle frame; wherein the bicycle frame comprises, at least on a pedal unit side of the bicycle frame, a chain stay that rotatably fastens the rear wheel; further comprising a forward-upwardly extending inclined branch toward a rear wheel side end of the chain stay; and wherein a rear end side of the seat stay being fastened to the forward-upwardly extending inclined branch; wherein the pedal unit is equipped with a chain cover that covers the chain, and the forward-upwardly extending inclined branch is provided outside the chain cover so as to overlap the chain cover in side view of the bicycle frame; wherein the chain cover is formed with a through-hole for passing the chain stay, and the chain stay is passed through the through-hole from an outside rear toward an inside front of the chain cover; wherein the chain cover is divisible in forward-rearward direction and the through-hole is formed to straddle the division in the chain cover; wherein a rear end of the seat stay is fastened on an axle of the rear wheel; wherein the rear end of the seat stay is fastened on the axle of the rear wheel by a fastening member provided in the rearwardly open oval hole; wherein the pedal unit is equipped with a chain cover that covers the chain and the seat stay is attached outside the chain cover; wherein the seat stay comprises a detachably attached member at either end of the seat stay to detachably attach the seat stay as a whole to the bicycle frame.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
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) 1-5, 9, 10, 12, and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chamberlain (US 8,006,993). Chamberlain discloses:
With regard to claim 1 - A ride-practicing bicycle, comprising:
a pedal unit 20;
a bicycle frame 2 having a receiving portion 29 for receiving the pedal unit 20 at a portion of a seat tube 21 of the bicycle frame 2;
a rear wheel 30 having a sprocket (see Fig. 1);
a chain installed to be coupled with the pedal unit 20 and the rear wheel 30 (Fig. 1), wherein the pedal unit 20 includes a rotatably mounted pedal crank to which a chain wheel is attached and has a connecting portion that is removably connected to the receiving portion 29 of the bicycle frame, and the chain bridges and engages the chain wheel and the sprocket of the rear wheel, whereby the pedal unit 20 and the chain are removably installed in the bicycle frame 2 (see Fig. 2, in which both are removed), and
wherein the bicycle frame 2 has a seat stay 32 on a side of the chain wheel, and an entirety or a portion of the seat stay is configured to be removable from the bicycle frame 2 so as to facilitate attachment and removal of the pedal unit and the chain to and from the bicycle frame 2.
With regard to claim 2 - wherein the removable entirety or portion of the seat stay 32 creates a gap greater than a width of the chain when removed so as to allow passage of the chain through the gap (see Fig. 2).
With regard to claim 3 - wherein the removable entirety or portion of the seat stay 32 has a protrusion protruding towards the rear wheel in a plan view (see Fig. 1).
With regard to claim 4 - wherein the bicycle frame 2 has a chain stay 34 that rotatably supports the rear wheel 30 on at least a side of the pedal unit 20.
With regard to claim 5 - wherein a branch portion 44 extending obliquely forward and upward is provided on the chain stay 34 on the side of the rear wheel 30, and a rear end of the seat stay 32 is detachably fixed to the branch portion (see Fig. 2).
With regard to claim 9 - wherein a rear end of the seat stay 32 is fixed to an axle of the rear wheel 30 (see Figs. 1 and 2).
With regard to claim 10 - wherein the rear end of the seat stay 32 is provided with an elongated slot that opens rearward, and a fixing member provided in the elongated hole fixes the rear end of the seat stay onto the axle of the rear wheel 30 (see marked up figure below).
PNG
media_image1.png
620
578
media_image1.png
Greyscale
With regard to claim 12 - wherein the seat stay 32 is interchangeable according to a diameter of the chain wheel.
With regard to claim 13 - A bicycle frame 2 to which a pedal unit 20 and a chain are removably mounted, wherein the bicycle frame 2 has a seat stay 32 on a side at which a chain wheel is to be installed, and an entirety or a portion of the seat stay 32 is configured to be removable from the bicycle frame so as to facilitate attachment and removal of the pedal unit and the chain to and from the bicycle frame.
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.
Claim(s) 6-8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Chamberlain in view of Holmes (US 592,288). With regard to claim 6, Chamberlain fails to explicitly disclose a chain cover that covers the chain, and the branch portion is provided outside the chain cover so as to overlap the chain cover in a side view. Holmes teaches a bicycle having a pedal unit, a chain, a chain stay a5, a branch portion a4 extending obliquely forward and upward provided on the chain stay a5 (see Fig. 1), and a chain cover C that covers the chain, wherein the branch portion a4 is provided outside the chain cover C so as to overlap the chain cover C in a side view (see Figs. 1 and 2). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the bicycle of Chamberlain with the teaching of Holmes so as to include the chain cover of Holmes, with a reasonable expectation of success, to better protect the chain from external factors.
With regard to claim 7, Holmes teaches wherein the pedal unit further includes a chain cover C that covers the chain, and the chain cover has a through hole through which the chain stay a5 is inserted from an outside rear side to an inside front side of the chain cover C (see Fig. 2).
With regard to claim 8, Holmes teaches wherein the chain cover C is separable into two pieces in a longitudinal direction (see C, b7, Fig. 3), and the through hole is formed across the separable two pieces of the chain cover (see Fig. 2).
With regard to claim 11, Holmes teaches wherein the pedal unit further includes a chain cover that covers the chain, and the seat stay is attached to an outside of the chain cover C (see below).
PNG
media_image2.png
708
762
media_image2.png
Greyscale
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY WILHELM whose telephone number is (571)272-6980. The examiner can normally be reached Monday-Friday 8:30-5:30.
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, Paul Dickson can be reached at 571-272-7742. 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.
/TIMOTHY WILHELM/Primary Examiner, Art Unit 3614 January 8, 2026