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 .
Election/Restrictions
Applicant’s election without traverse of Invention I in the reply filed on 17 October 2025 is acknowledged.
Claim 19 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 17 October 2025.
Applicant's election with traverse of Group I in the reply filed on 17 October 2025 is acknowledged. The traversal is on the ground(s) that the species are not mutually exclusive. This is not found persuasive because though Applicant asserts that any or all of the various shaped pegs and hooks could be included, this is not disclosed in the application as filed. That is, at least Figures 13-15 clearly show different coupling variations as different, distinct embodiments, and they are described as such in the specification.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11 and 12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 17 October 2025.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Italy on 11 November 2022. It is noted, however, that applicant has not filed a certified copy of the 102022000023310 application as required by 37 CFR 1.55. While a copy of the application has been retrieved, no certified copy is present in the application.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the lowered central seat as a hole through the padding must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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 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 use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: the shape coupling means introduced in claim 1.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 3-17 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 3 recites “in a single piece with an inner wall of the padding.” It is unclear to what this is directed. Perhaps eliminating the preceding comma would clarify.
Claim 4 recites “to make an undercut with the fixing holes.” It is unclear how an undercut of the base would include the fixing holes.
Claim 6 recites “mak[ing] an undercut with an outer peripheral wall.” It is unclear how an undercut of the padding would include the body.
Claim 8 recites “said shape coupling means comprise pegs…” As the shape coupling means have already been defined as a plurality of pegs (see claim 1), it is unclear how this language is intended to be interpreted (i.e. are these intended to be different pegs? is this language a further limit on the prior pegs?).
Claim 9 recites “said shape coupling means comprise slits and ribs…” As the shape coupling means have been twice defined as pegs (see claims 1 and 8), it is unclear how this language is intended to be interpreted (i.e. are these intended to be different coupling means? is this language a further limit on the prior pegs?).
Claim 14 recites “mak[ing] an undercut with an inner peripheral wall.” It is unclear how an undercut of the padding would include the body.
Claim 16 recites “said shape coupling means comprise pegs…” As the shape coupling means have already been defined as a plurality of pegs (see claim 1), it is unclear how this language is intended to be interpreted (i.e. are these intended to be different pegs? is this language a further limit on the prior pegs?).
Claim 17 recites the “lowered central seat is a hole.” It is unclear how a presumably positive element (i.e. a “seat”) could be a negative space (i.e. a “hole”). Moreover, it is unclear how such a hole would relate to the central hole the seat is “counter-shaped” to and/or how a hole in padding would form an undercut, etc. as claimed.
Claims 4, 5, 7-13, and 15-17 are deemed indefinite because they are dependent on indefinite claims.
Claim Rejections - 35 USC §§ 102, 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 (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.
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) 1 and 2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yu et al. (US Patent Application Publication Number 2009/0189421; hereinafter “Yu et al.”).
Regarding claim 1, Yu et al. discloses a saddle for bicycles comprising: a frame (at least 232) having a peripheral structure, configured to be fixed to a corresponding upright of a bicycle frame (see at least paragraph 24), a body (231 and/or 21) overlapping said frame, along a vertical direction, substantially perpendicular to said body, and anchored to the frame by shape coupling means (214, 224, and/or 234), a padding (221 or 222 formed with members 224; note that the same elements appear with different reference numbers in different figures of Yu et al.) comprising a cushion (main body) overlapping said body along said vertical direction, made of an elastic polymeric material (the plastic is viewed as such), wherein said shape coupling means comprise a plurality of pegs (224) and relative fixing holes (214 and/or 234), wherein said pegs are in a single piece with the cushion of the padding and facing toward the body (this is the general arrangement), and wherein said pegs are embedded in said fixing holes, provided on the body (this is the general arrangement).
Regarding claim 2, Yu et al. further discloses said fixing holes are through the body (see figures).
Claim(s) 3-5 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yu et al.
Regarding claim 3, Yu et al. discloses a saddle as explained above and further discloses pegs have a base, in a single piece with an inner wall of the padding, facing the body, and a head, cantilevered with respect to the base (see at least Figures 5 and 6 showing this shape for member 224). While Yu et al. is thus viewed as disclosing the device as claimed, the shape of the pegs may not be explicitly described. Changes in shape require only routine skill in the art however, and it accordingly would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide pegs shaped as claimed based on normal variation to improve safety and comfort for various users.
Regarding claims 4 and 5, Yu et al. further discloses said base is configured so as to make an undercut with the fixing holes of the body, along the vertical direction (at least as best understood and/or as modified above), and wherein the head has a front flare configured to facilitate an insertion of the head through the fixing holes (again, at least as modified).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. Yu et al. discloses a saddle as explained above and further discloses the use of ethylene vinyl acetate (see at least paragraph 21) but may not explicitly disclose such material for the padding. Material selection is a routine design choice and the use of the claimed materials are well-known as noted above. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide padding of materials as claimed based on normal variation to improve manufacture and comfort for various users.
Claim(s) 6-10 and 13-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yu et al. in view of Yu (US Patent Number 5348369; hereinafter “Yu”).
Regarding claim 6, Yu et al. discloses a saddle as explained above but may not clearly disclose an undercut on the padding as claimed. Yu discloses a related device including an outer peripheral edge of a padding (60, 60’, and/or 70) makes an undercut with an outer peripheral wall of a body (50), along a vertical direction (at least as best understood; see figures). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide an undercut arrangement as taught by Yu in Yu et al.’s device because this could improve safety and comfort for various users.
Regarding claims 7-10, Yu et al., modified as described, further discloses at least one male-female coupling is included between the outer peripheral edge of the padding and the outer peripheral wall of the body (much as in Yu), wherein said shape coupling means comprise pegs arranged between the outer peripheral edge of the padding and the outer peripheral wall of the body (in the combination at least as best understood), wherein said shape coupling means comprise slits and ribs at the outer peripheral wall of the body which engage with corresponding pegs on the padding (at least in the combination much as in Figure 7 of Yu and at least as best understood), wherein said slits are configured to facilitate an insertion of the pegs and the ribs are configured to make an undercut coupling with the padding (in the combination and as best understood; see again at least Figure 7 of Yu).
Regarding claim 13, Yu et al., modified as described, discloses a saddle as explained above but may not disclose welding. The making of connections by welding is old and well-known in the art. Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide a welding connection as claimed in Yu et al.’s device as previously modified because this could provide a simple and secure connection to ensure user comfort and safety.
Regarding claim 14, Yu et al. discloses a saddle as explained above including a central hole in the body but may not clearly disclose a central seat as claimed. Yu discloses a related device including a body comprising a central hole (51, 52, 51’, and/or 52’) and padding (60, 60’, and/or 70) comprising a corresponding lowered central seat (of and/or at 60 and/or 60’) counter-shaped to the central hole, wherein at respective perimeters of the central hole and the lowered central seat, the padding includes an inner peripheral edge that makes an undercut with an inner peripheral wall of the body, along the vertical direction (at least as best understood; see figures). Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide a central seat arrangement as taught by Yu in Yu et al.’s device because this could improve safety and comfort for various users.
Regarding claims 15-17, Yu et al., modified as described, further discloses at least one male-female coupling and/or an engagement and/or at least one connection by welding are included at said respective perimeters of the central hole and the lowered central seat (engagements and/or couplings as claimed much as in Yu would be present in the combination), wherein said shape coupling means comprise pegs arranged at said respective perimeters of the central hole and the lowered central seat (in the combination at least as best understood), and wherein said lowered central seat is a hole through the padding (at least inasmuch as in the invention and as best understood).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure because they provide a range of prior art saddle designs.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILIP F GABLER whose telephone number is (571)272-2155. The examiner can normally be reached Mon-Fri 8:00 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Dunn can be reached at 571-272-6670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILIP F GABLER/Primary Examiner, Art Unit 3636