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 .
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 “each one of the at least one engaging recess radially embedded in the rod” as set forth in claim 1, and the “at least one engaging recess, radially embedded in the rod for engaging the tube and the rod” as set forth in claim 8 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.
Specification
The disclosure is objected to because of the following informalities: All descriptions of the at least one engaging recess being radially embedded in the rod in both the specification and the Abstract should be corrected inasmuch as such descriptions are not supported by the drawings which clearly show recesses 21 of the tubes being radially spaced from the rod 10 (note Figs. 2-4).
Appropriate correction is required.
Claim Rejections - 35 USC § 112
3. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, there is insufficient support for the limitation “each one of the at least one engaging recess radially embedded in the rod”. The specification fails to adequately explain how the recesses 21 positioned on the radially outer surface of the respective tubes 20A, 20B are to be arranged to be embedded in the rod 10 that is positioned within the radially inner surface of the respective tubes. Further, the drawings fail to show such a construction.
Regarding claim 8, there is insufficient support for the limitation “at least one engaging recess, radially embedded in the rod for engaging the tube and the rod”. The specification fails to adequately explain how the recesses 21 positioned on the radially outer surface of the respective tubes 20A, 20B are to be arranged to be embedded in the rod 10 that is positioned within the radially inner surface of the respective tubes. Further, the drawings fail to show such a construction.
5. 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 1-9 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.
Regarding claim 1, the limitation “each one of the at least one engaging recess radially embedded in the rod” renders the claim indefinite because it is unclear how the recesses 21 positioned on the radially outer surface of the respective tubes 20A, 20B can be considered to be embedded in the rod 10 when the rod is positioned within the radially inner surface of the respective tubes. As such, the metes and bounds of this limitation is unascertainable.
Regarding claims 5-7 and 9, the term “thin” in each of these claims is a relative term which renders the claim indefinite. The term “term” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, the metes and bounds of the limitation “a thin cross-section” is unascertainable.
Regarding claim 8, the limitation “at least one engaging recess, radially embedded in the rod for engaging the tube and the rod” renders the claim indefinite because it is unclear how the recesses 21 positioned on the radially outer surface of the respective tubes 20A, 20B can be considered to be embedded in the rod 10 when the rod is positioned within the radially inner surface of the respective tubes. As such, the metes and bounds of this limitation is unascertainable.
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 (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.
Claims 1, 3, 5 and 7, as best understood in light of the Section 112 rejections noted above, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schlanger (US 2011/0101768 A1).
Regarding claim 1, Schlanger discloses a spoke comprising: a rod 2 made of a composite material containing thermoplastic resin and fibers (paragraph [0099]); and at least one tube 76, each one of the at least one tube having at least one engaging recess (helical grooves of internal threads 84 as shown in Fig. 6a and described in paragraph [0098]), and each one of the at least one engaging recess radially embedded in the rod (evident from Fig. 6b and paragraph [0100] where the crimp force 86 deforms the end 6 of the rod so that it conforms to the contour of internal threads 84).
Regarding claim 3, Schlanger further discloses the at least one engaging recess of each one of the at least one tube includes multiple engaging recesses (helical grooves of internal threads 84 as shown in Fig. 6a and described in paragraph [0098]) surrounding a circumference of the rod.
Regarding claims 5 and 7, Schlanger further discloses the rod has a wind-resistant section disposed at a middle portion of the rod (implicit from at least Fig. 4a) and formed by heating and shaping (note the manner in which the wind-resistant section is formed is not afforded full patentable weight in a product claim as noted in MPEP 2113); and the wind-resistant section has a thin cross-section (note the entire cross-section of the spoke is considered to be “thin”).
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.
Claims 2, 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Schlanger.
Regarding claim 2, although Schlanger further discloses each one of the at least one engaging recess of each one of the at least one tube has a width defined along an extending direction of the rod, and a depth defined along a radial direction of the rod (implicit from at least Fig. 6a that each helical groove of internal threads 84 would have both a width and a depth) so as to provide a connection between the rod and tube for resisting spoke tension forces (paragraph [0100]), Schlanger fails to expressly disclose the width being 9 mm and the depth being greater than or equal to 0.3 mm and less than or equal to 0.9 mm.
Nonetheless, it would have been obvious to one having ordinary skill in the art, as a matter of routine optimization, before the effective filing date of the claimed invention to have modified the spoke of Schlanger so that each one of the at least one engaging recess has the claimed width and depth dimensions with a reasonable expectation of success in ensuring that the tube remains adequately connected to the rod during the intended use of the wheel upon which the spoke is assembled. It is further noted that Applicant has not provided any evidence of the criticality for these claimed dimensions.
Regarding claim 4, Schlanger further discloses the at least one engaging recess of each one of the at least one tube includes multiple engaging recesses (helical grooves of internal threads 84 as shown in Fig. 6a and described in paragraph [0098]) surrounding a circumference of the rod.
Regarding claim 6, Schlanger further discloses the rod has a wind-resistant section disposed at a middle portion of the rod (implicit from at least Fig. 4a) and formed by heating and shaping (note the manner in which the wind-resistant section is formed is not afforded full patentable weight in a product claim as noted in MPEP 2113); and the wind-resistant section has a thin cross-section (note the entire cross-section of the spoke is considered to be “thin”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIP T KOTTER whose telephone number is (571)272-7953. The examiner can normally be reached 9:30-6 EST Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joe) J Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kip T Kotter/Primary Examiner, Art Unit 3615