DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after May 19, 2022, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
Applicant’s amendment filed 06/10/26 (hereinafter Response) including claim amendments have been entered. Examiner notes that claims 1 and 10 have been amended, while all other claims are maintained as previously presented in the application. In view of amendment, all the objections previously presented have been withdrawn. Applicant’s amendment necessitated a new ground(s) of rejections are made under 35 USC §103, details below and claims 1-10 remain pending in the application.
Response to Arguments
Applicant's arguments, see ‘Remarks’ filed 06/10/2026 have been fully considered but they are not found persuasive.
In view of amendment and on page 6 of the argument, the applicant argues with the fact that Shimizu in alone and in combination with Hombo do not recite: “first and second arms of the swingarm comprise first and second coupling recesses, respectively,...and have each an open side...wherein said first and second coupling recesses extend according to a main extension direction which is inclined relative to a plane defined by the hub motor axis and the rotary axis of the swing arm so that said open sides face the ground.” The examiner disagrees.
In view of argument, claim 1 recites “coupling recesses each having an open side inclined relative to the plane defined by the hub-motor axis and the swing-arm rotary axis, such that the open sides face the ground.” It shoeld be noted that Hombo expressly depicts the claimed limitation in fig. 2; where, further the annotated illustration of Hombo (see below) shows the first and second coupling recesses formed with open sides that are angled downward relative to the hub-motor axis plane. The reference therefore teaches the same geometric relationship required by the claim. Even assuming arguendo that Hombo’s depiction required minor interpretation, MPEP 2143 explains that a rejection under 35 USC §103 is proper where the modification is a predictable variation or an obvious matter of design choice that yields no unexpected results. Court have repeatedly affirmed this principle, including KSR V. Teleflex, 550 U.S. 398 (2007), which held that when a claimed configuration is a predictable use of known elements to achieve an expected function, the combination is obvious. In re Kuhle, 526 F.2d 553 (CCPS 1975), confirms that arranging structural features in an orientation that merely optimizes assembly, or operation constitutes an obvious design choice absent criticality. Here, orienting the recess open sides downward- exactly as shown in Hombo – serves the predictable purpose of facilitating engagement/ disengagement of the coupling interface and does not produce any unexpected result. Therefore, the claimed subject matter of the recess open sides is fully met by Hombo’s express disclosure and, alternatively, represents an obvious matter of design choice under MPEP §2143 and the above case law. Accordingly, the rejection of claim 1 (and its dependent claims) under §103 is sustained and rendered. All the dependent claims are consistently and proceed in the same manner as the subject matter set forth in the independent claims.
Claim Interpretation
Claims 1, 3 and 9 recite the phrase “first and second” are interpreted as indicating “the left and right side” of the motorcycle or scooter frame.
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.
Claim 10 recites the limitation “the brake caliper” in lines 3-4. “a brake caliper” is not found recited in an independent claim 9. There is insufficient antecedent basis for this limitation in the claim.
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 (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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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 non-obviousness.
Claims 1-4, 7 and 9-10 are rejected under 35 USC 103 as being unpatentable over Shimizu Kenichi (JP 2007106203 A; hereinafter, “Shimizu”) in view of Hombo (US Pub. 20130075180 A1).
Regarding claim 1, Shimizu discloses: a motorcycle (10, figs. 1-10) comprising: - a rear wheel (11b, fig. 1) with hub motor (56a), said hub motor (56a, fig. 1; [0024]) comprising a hub motor axis (central shaft 55 axis) having first and second opposite end portions (left and right opposite end of shaft 55);
- a swingarm (rear arm 14, [0021]) comprising a first and a second arm (“pair of arms”; [0041]) rotary coupled to a frame [ para. 0045 teaches: “the rear arm 14 is rotated by the rotation support member 36 via the connecting piece 39, and accordingly, the vehicle body 13 is also raised via the brackets 41a and 41b to which the rear arm 14 is connected”; thus, a swingarm comprising a first and a second arm rotary coupled to a frame];
- a disc brake (56b, fig. 1), arranged on the side of the first arm of the swingarm (14), comprising a braking disc (56b) rotationally integral with said wheel (11b) and a brake caliper (fig. 1) fixed to said swingarm (14),
wherein the first (left 14) and second arms (right 14) of the swingarm (14) comprise a first and second coupling recesses (fig. 1), respectively, which are configured to receive the first and second end portions of the hub motor axis (axis at hub motor 56a), respectively, and wherein the brake caliper (fig. 1) is angularly spaced (fig. 1 shows angularly spaced) about the hub motor axis (axis at hub motor 56a) relative to said main extension direction (center direction of the rear part of the swingarms) so as to allow to remove said wheel (11b) from said motorcycle (10) without the brake disc (56b) mechanically interfering with the brake caliper (see fig. 1).
Shimizu does not appear to explicitly teach that the first and second arms of the swingarm (14) have each an open side to allow to uncouple the hub motor axis from said swingarm and remove said wheel from the motorcycle, wherein said first and second coupling recesses extend according to a main extension direction which is inclined relative to plane defined by the hub motor axis and a rotary axis of the swing arm so that said open sides face the ground; however,
Hombo in another two-wheeled motor vehicle similar to Shimizu teaches the first and second arms of the swingarm (left 8 and right 8, fig. 8 ) have each an open side (42A, 42B; annotated fig. 2 below) to allow to uncouple the hub motor axis (axis at center of hub motor) from said swingarm (left 8 or right 8) and remove said wheel (9, fig. 2) from the motorcycle (1), wherein said first and second coupling recesses (straight recess 41A, 41B as depicted in annotated fig. 2 below) extend according to a main extension direction (X1, annotated fig. 2 below) which is inclined relative to plane defined by the hub motor axis (central shaft 55 axis) and a rotary axis (axis at S1, annotated fig. 2 of Hombo below) of the swing arm ( fig. 2 shows inclined relative to the ground) so that said open sides (42A,42B; annotated fig. 2 below) face the ground (see annotated fig. 2 below where 42A or 42B are facing the ground).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the configuration of Hombo’s teaching as explained above, such that said first and second coupling recesses extend according to a main extension direction which is inclined relative to plane defined by the hub motor axis and a rotary axis of the swing arm so that said open sides face the ground and integrate such a configuration into the invention of Shimizu, equivalent to the invention of claimed limitations with a reasonable expectation of success in order to advantageously optimize the motorcycle with easily removable wheel configuration provided with hub motor, such that the improved visibility and improved maintainability are assured by disposing the mechanical caliper for quiescence, which has a high frequency of maintenance, rearward of and above the service caliper to attain a low center of gravity [para. 0016 of Hombo]. Such an arrangement represents an apparent design choice that a person of ordinary skill in the art would readily appreciate.
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Annotated fig. 1 of Hombo.
Regarding claim 2, Shimizu as modified above further teaches that the hub motor axis (axis at center of hub motor) has a first central geometric axis (Al, annotated fig. 1 of Shimizu below) corresponding to the rotation axis of said wheel (11b; [see fig 1 where axis of hub motor 56a corresponding to the rotation axis of said (rear) wheel 11b]), wherein the brake caliper (fig. 1) comprises a caliper cylinder adapted to accommodate a piston of the brake caliper [as depicted in fig. 1 of Shimizu, the caliper showing piston cylinder configuration similar to that of claimed invention], said caliper cylinder has a second central geometric axis (A2, annotated fig. 1 of Shimizu below) parallel to said first central axis (Al, annotated fig. 1 of Shimizu below) [annotated fig. 1 below shows both the axes A1 and A2 are positioned in “parallel”], wherein, Shimizu does not appear to explicitly teach first central axis, first central geometric axis, the first intersection point, second intersection point and remaining limitations of claim 1; however,
Hombo teaches that a second central geometric axis (A2, annotated fig. 1 of Hombo below) parallel to said first central axis (Al, annotated fig. 1 of Hombo below) [annotated fig. 1 below shows both the axes A1 and A2 are positioned in “parallel”], wherein having considered a first intersecting point (P1, annotated fig. 1 of Hombo below) between the first central geometric axis (Al) and a plane orthogonal to the first central geometric axis (Al), and a second intersecting point (P2) between the second central geometric axis (A2) and said orthogonal plane, the brake caliper (caliper 54 of Hombo) is arranged so that a ray (S1, annotated fig. 1 of Hombo) exiting from the first intersecting point (P1) and passing through the second intersecting point (P2) forms an angle from 90° to 270° [ see annotated fig. 1 of Hombo showing angle greater than 90 deg], extremes included, with a ray (S2), parallel to or coincident with said main extension direction (X1) [annotated fig.1 below showing parallel to or coincident] and lying on said orthogonal plane, which exits from the first intersecting point (P1) and is directed towards the open side (42A) of said first coupling recess (41A).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the configuration of Hombo’s teaching as explained in the claim limitations above and integrate those into the invention of Shimizu with a reasonable expectation of success in order to advantageously optimize the motorcycle design with easily removable wheel configuration - reciting the relative angular positioning of the caliper cylinder axis with respect to the hub motor axis and the ray directed toward the openside of the coupling recess – constitutes merely a geometric consequences of the known placement of a brake caliper on a swingarm mounted hub-motor assembly. The cited references collectively teach or render obvious arranging the caliper such that its cylinder axis is parallel to the wheel axis and positioned at any angular location suitable for clearance, assembly, or serviceability. No criticality or unexpected result is apparent from the claimed angular range. Accordingly, each reference teaches known elements that perform the same function, and their substitution and combination would have represented a predictable use of prior art element according to their established functions.
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Annotated fig. 1 of Shimizu
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Annotated fig. 1 of Hombo
Regarding claim 3, Shimizu as modified above further teaches that said first and second coupling recesses (left 41A, right 41 B; annotated fig. 1 of Hombo above from claim 1) are straight recesses (see claim 1 above) of said first and second arms (left 14, right 14) of the swingarm (14).
Regarding claim 4, Shimizu as modified above further teaches that any one of the preceding claims, comprising a fender (fig. 1 of Shimizu) associated with said wheel (11b, fig. 1), wherein said main extension direction (X1 of Hombo) is such as to allow to remove said wheel (11b) from said motorcycle (10) without said wheel (11b) mechanically interfering with the fender (fig. 1) [ It should be understood that the teaching of Hombo into the invention of Shimizu from claim 1 is for “improved visibility and improved maintainability are assured by disposing the mechanical caliper for quiescence” as described in [0016] of Hombo; thus, the modified Shimizu configuration is to allow to remove said wheel (11b) from said motorcycle (10) without said wheel (11b) mechanically interfering with the fender.]
Regarding claim 7, Shimizu as modified above further teaches that said fender (fig. 1) entirely stands above said wheel (11b).
Regarding claim 9, Shimizu teaches a motorcycle (10; figs. 1-10) comprising: - a rear wheel (11b, fig. 1) with hub motor (56a), said hub motor (56a) comprising a hub motor axis (center shaft 55 axis) having first and second opposite end portions (left and right opposite end of shaft 55);
- a swingarm (rear arm 14, [0021]) comprising a first and a second arm (“pair of arms”; [0041]);
- a fender (fig. 1) associated with said wheel (11b) and coupled to the swingarm (14);
wherein the first and second arms (“pair of arms”; [0041]) of the swingarm (14) and the first and second end portions of the hub motor axis (central shaft 56a axis) and fender (fig. 1); but Shimizu fails to teach that comprise a first and second coupling recesses , respectively, which are configured to receive the first and second end portions of the hub motor axis, respectively, and have each an open side to allow to uncouple the hub motor axis from said swingarm and remove said wheel from the motorcycle, wherein said first and second coupling recesses have a main extension direction such as to allow to remove said wheel from said motorcycle (1) without said wheel mechanically interfering with the fender; however,
Hombo teaches that the first and second arms (left 8 and right 8, fig. 8 ) of the swingarm (8); comprise a first and second coupling recesses (41A, 41B, annotated fig. 2 above), respectively, which are configured to receive the first and second end portions of the hub motor axis respectively, and have each an open side (42A,42B; annotated fig. 2 of Hombo above) to allow to uncouple the hub motor from said swingarm and remove said wheel from the motorcycle, wherein said first and second coupling recesses (41A, 41B, annotated fig. 2 above) have a main extension direction (X1) such as to allow to remove said wheel from said motorcycle without said wheel mechanically interfering with the fender.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the modified Shimizu to incorporate the teaching of Justus and provide the coupling-recess main extension direction be selected to avoid interference with a fender merely reflects routine design optimization. The cited art teaches wheel-removal paths defined by open-sided recesses, and it would have been obvious matter of design choice to orient those recesses, so the wheel clears adjacent components such as a fender. Accordingly, each reference teaches known elements that perform the same function, and their substitution and combination would have represented a predictable use of prior art element according to their established functions.
Regarding claim 10, Shimizu as modified above further teaches that the hub motor axis (axis at center of hub motor) has a first central geometric axis (Al, annotated fig. 1 of Shimizu above) corresponding to the rotation axis of said wheel (11b; [see fig 1 where axis of hub motor 56a corresponding to the rotation axis of said (rear) wheel 11b]), wherein the brake
caliper (fig. 1) comprises a caliper cylinder (61) adapted to accommodate a piston of the brake caliper [as depicted in fig. 1 of Shimizu, the caliper showing piston cylinder configuration similar to that of claimed invention], said caliper cylinder has a second central geometric axis (A2, annotated fig. 1 of Shimizu above) parallel to said first central axis (Al, annotated fig. 1 of Shimizu below) [annotated fig. 1 below shows both the axes A1 and A2 are positioned in “parallel”], wherein, Shimizu teaches the fender but does not appear to teach the remaining limitation of claim 10; however,
Hombo teaches that a second central geometric axis (A2, annotated fig. 1 of Hombo below) parallel to said first central axis (Al, annotated fig. 1 of Hombo below) [annotated fig. 1 below shows both the axes A1 and A2 are positioned in “parallel”], wherein having considered a first intersecting point (P1, annotated fig. 1 of Hombo below) between the first central geometric axis (A1) and a plane orthogonal to the first central geometric axis (A1), and a second intersecting point (P2) between the second central geometric axis (A2) and said orthogonal plane, the fender is arranged on the opposite side of the ray (S1, see annotated fig.1 of Hombo above) joining the intersection points relative to the open sides of the recesses.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the configuration of Hombo’s teaching as explained in the claim limitations above and integrate those into the invention of Shimizu with a reasonable expectation of success in order to advantageously optimize the motorcycle design with easily removable wheel configuration - requiring the fender to be arranged on the opposite side of the ray joining the wheel-axis and caliper- cylinder axes relative to the open sides of the recesses – reflects only an obvious placement of the fender to avoid interference with the wheel-removal path. Accordingly, each reference teaches known elements that perform the same function, and their substitution and combination would have represented a predictable use of prior art element according to their established functions.
Claims 5 and 6 are rejected under 35 USC 103 as being unpatentable over Shimizu in view of Hombo and further in view of Marioni (US Pub. 20150266542 A1).
Regarding claim 5, Shimizu as modified above further teaches that a battery (“the battery accommodating parts 53a and 53b”; [0052]) and a power supply cable ( via 53a and 53b) of the hub motor (56a, fig. 1; [0024]) which is connected to the battery (“battery”) and to the hub motor (56a), but fails to explicitly teach wherein the power supply cable is arranged and has a length so as to allow to remove said wheel from the motorcycle while remaining operatively connected to the battery and to the hub motor; however,
Marioni in another ‘wheel hub motor and electric bicycle comprising said wheel hub motor’ similar to Shimizu teaches that the power supply cable (electric cable ‘C’, fig 3; [0060]) is arranged and has a length (fig. 3 shows cable has length) so as to allow to remove (via plug at tips of the cable as depicted in fig. 3) said wheel from the motorcycle (electric vehicle) while remaining operatively connected (via plug, fig. 3) to the battery and to the hub motor (4).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the modified Shimizu to incorporate the teaching of Marioni and provide the hub-motor power supply cable be arranged and dimensioned so that the power supply cable (electric cable ‘C’, fig 3; [0060]) is arranged and has a length so as to allow to remove said wheel from the motorcycle while remaining operatively connected to the battery and to the hub motor – constitute nothing more than an obvious variation in cable routing and length selection. The cited references collectively teach providing sufficient slack, flexible routing, service loops in electrical cables associated with hub-motor assemblies to permit wheel removal, inspection, or maintenance without disconnecting the electrical connection. Accordingly, each reference teaches known elements that perform the same function, and their substitution and combination would have represented a predictable use of prior art element according to their established functions.
Regarding claim 6, Shimizu as modified above further teaches that said power supply cable is arranged and has a length (fig. 3 of Marioni shows cable has length), so as to allow to remove the wheel (via plug at tips of the cable as depicted in fig. 3 of Marioni) from the motorcycle and arrange it next to the motorcycle [fig. 3 shows cable without vehicle; thus, next to the vehicle, such as motorcycle] while remaining operatively connected to the battery (via plug, fig. 3) and to the hub motor (4).
Claim 8 is rejected under 35 USC 103 as being unpatentable over Shimizu in view of Hombo and further in view of Park, Gye-Jeung (WO 2012011767 A2; hereinafter, “Park”).
Regarding claim 8, Shimizu as modified above teaches the power supply, but fails to teach that said power supply cable at least partially extends below the second arm of the swingarm; however,
Park in another electric motor similar to Shimizu teaches that power supply cable at least partially extends below the second arm of the swingarm [ pages 7-8 and also see fig. 7 where fixed wire 60 at least partially extends below the second arm of the swingarm.]
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the modified Shimizu to incorporate the teaching of park and provide a power supply cable at least partially extends below the second arm of the swingarm that helps to improve durability of power cables, a gentler bend radius and fewer hard contact points. The modification represents nothing more than the predictable use of known cable management means to secure power cables that supply a power to the important components, such as hub-motor and therefore claim does not include any feature that would have rendered the combination non-obvious to one of ordinary skill in the art.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20050139407 A1 to Michael teaches: a motorcycle in which the swingarm pivot is coaxial with the sprocket shaft, and the sprocket is laterally outside the swingarm structures at the swingarm pivot.
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 extension fee 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 NABIN KUMAR SHARMA whose telephone number is (703)756-4619. The examiner can normally be reached on Mon - Friday: 8:00am - 5 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, VIVEK D KOPPIKAR can be reached on 571-272-5109. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NABIN KUMAR SHARMA/Examiner, Art Unit 3612
/VIVEK D KOPPIKAR/Supervisory Patent Examiner
Art Unit 3612
August 13, 2026
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