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 Group I (claims 1 – 8) in the reply filed on June 3, 2026 is acknowledged.
Claim Objections
Claim 1 is objected to because of the following informalities:
In claim 1, line 11, “connecting at least one front ski” should be “connecting the at least one front ski”;
In claim 1, line 15, “the foot rest disposed” should be “the foot rest is disposed”.
Appropriate correction is required.
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.
Claims 1 – 8 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 1 recites the limitation "at least one front ski" in line 11. There is insufficient antecedent basis for this limitation in the claim. The term “a single front ski” is previously recited on line 5 of claim 1 and it is unclear how (or whether) the two limitations are related. Claims 2 – 8 depend from claim 1, include the same rejected limitations, and therefore, are also rejected for the same reasons.
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 – 3 and 7 and are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of U.S. Patent No. US 11,148,750 in view of patent number US 6,234,263 B1 to Boivin et al. (hereinafter referred to as Boivin).
Claim 9, of patent number US 11,148,750 anticipates all of the limitations of the snow vehicle of claim 1, except:
the upright is connected to a second end of the fork, the upright including a pin pivotally connecting at least one front ski (said single from ski) to the upright;
the foot rest is disposed outboard of the prime mover,
wherein the foot rest is positioned below an uppermost portion of the endless track.
Boivin discloses a frame structure for a snowmobile, wherein an upright (movable piston 68) connected to a second end (distal end 70) of a fork (fork 42), the upright including a pin (See Fig. 4) pivotally connecting at least one front ski (single ski 72) to the upright (Col. 4, Lns. 23 – 26);
a foot rest (stirrups 28 and 30) is disposed outboard of the prime mover (See Fig. 2, NOTE: Dictionary.com defines outboard as “outside or away from the center of a hull, aircraft, machine, etc.”), wherein the foot rest is positioned below an uppermost portion of an endless track (endless belt 18). It would have been obvious to one of ordinary skill in the art, to modify the invention of Claim 8 of patent number US 11,148,750, to include the configuration of Boivin to advantageously improve rider comfort.
Regarding claims 2, 3 and 7 of the current application, Claim 9 of patent number US 11,148,750, in view of Boivin, disclose the snow vehicle of claim 1. Boivin further discloses:
[Claim 2] a snow vehicle (10) further comprising a track frame (suspension 20), wherein the endless track (track 18) is movably coupled to the track frame;
[Claim 3] wherein the foot rest (stirrups 28 and 30) is coupled to the track frame (suspension 20) at a position rearward of the front of the endless track (See Fig. 1); and
[Claim 7] further comprising a drive axle (the axle of driven portion 32, Fig. 3) and a drive member (driven portion 32) coupled to transmit power from the prime mover (engine 16) to the endless track (endless track 18), wherein the drive axle and the drive member rotate about a drive axle axis, wherein the drive axle axis is forward of at least a portion of the foot rest (stirrups 28 and 30; See Figs. 1 – 3).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify the claimed invention of Claim 8 in patent number US 11,148, 750 to have the configuration disclosed by Boivin, above, to beneficially make the snowmobile more compact.
Claims 4 – 6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9, 11 and 12 of U.S. Patent No. US 11,148,750 in view of Boivin, and further in view of patent number US 5,944,133 A to Eto.
Claims 9, 11 and 12 of patent number US 11,148, 750, modified by Boivin, anticipates claims 4 – 6 of the current application except, they do not teach:
[Claim 4 (‘130)] wherein the heat exchanger provides a coolant to the prime mover;
[Claim 5 (‘130)] further comprising a coolant tank located above the heat exchanger, wherein the coolant tank is connected to the heat exchanger via coolant lines; and
[Claim 6 (‘130)] wherein the heat exchanger is located rearward from the foot rest.
However, patent number Eto discloses:
[Claim 4] wherein the heat exchanger (heat exchanger 257) provides a coolant to the prime mover (engine 56; Col. 13, Ln. 66 through Col. 14, ln. 1);
[Claim 5] further comprising a coolant tank (expansion tank 322) located above the heat exchanger (See Fig. 21), wherein the coolant tank is connected to the heat exchanger via coolant lines (short hose 317); and
[Claim 6] wherein the heat exchanger is located rearward from the foot rest (inlet fitting 304; Col. 16, Lns. 53 – 57).
It would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify the claimed inventions of reference claims 8, 11 and 12, respectively, of patent number US 11,148,470 to have a heat exchanger and coolant as configured by Eto above, to prevent the snowmobile from overheating.
Claim 8 of this application is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. US 11,148,750, in view of Boivin, and further in view of patent application number US 2004/0238251 A1 to Oron et al. (hereinafter referred to as Oron).
Claim 9 of patent number US 11,148, 750, modified by Boivin, anticipates claims 1 of the current application, however it does not anticipate,
[Claim 9 (‘130)] wherein the prime mover includes an electric motor. Yet, Oron discloses a snow vehicle in which the prime mover is an electric motor (motor 6; Paragraph [0045]). It would have been obvious to one of ordinary skill in the art, before the effective filing date, to modify this snowmobile such that the motor is an electric motor, so that it can use regenerative power.
Double Patenting Chart
Instant application
Reference US Pat 11/148,750
18/631,130
16/190,392
1. (Original) A snow vehicle, comprising: a frame;
9. A snow vehicle comprising: a frame,
an endless track;
an endless track;
handlebars;
handlebars;
a single front ski;
at least one front ski;
a prime mover attached to the frame, the prime mover drivingly coupled to the endless track;
an engine, and a transmission, the engine and transmission attached to the frame, the engine drivingly coupled to the endless track via the transmission; and
a front suspension system including a fork, a first end of the fork connected to the handlebars;
a front suspension assembly that includes a fork connected on one end to the handlebars and connected on an opposite end to the upright, wherein actuation of the handlebars is communicated to the at least one front ski via the front suspension and the upright;
an upright connected to a second end of the fork, the upright including a pin pivotally connecting at least one front ski to the upright, wherein actuation of the handlebars is communicated to the single front ski via the front suspension system; and
an upright pivotally connected to the at least one front ski;
a foot rest disposed outboard of the prime mover, wherein at least a portion of the foot rest disposed rearward of a front of the endless track, wherein the foot rest is positioned below an uppermost portion of the endless track.
a foot rest, at least a portion of the foot rest disposed rearward of a front of the endless track.
2. (Original) The snow vehicle of claim 1, further comprising a track frame, wherein the endless track is movably coupled to the track frame.
10. The snow vehicle of claim 8, further including a drive axle, drive member, and drive belt, the engine drivingly coupled to the endless track via the transmission, the drive belt, the drive axle, and the drive member.
3. (Original) The snow vehicle of claim 2, wherein the foot rest is coupled to the track frame at a position rearward of the front of the endless track.
11. The snow vehicle of claim 9, wherein at least a portion of the foot rest is disposed rearward of the drive axle.
4. (Original) The snow vehicle of claim 2, wherein the track frame includes a heat exchanger located above the endless track, wherein the heat exchanger provides a coolant to the prime mover.
12. The snow vehicle of claim 8, further including a track frame attached to the frame, wherein the track frame includes a heat exchanger.
5. (Original) The snow vehicle of claim 4, further comprising a coolant tank located above the heat exchanger, wherein the coolant tank is connected to the heat exchanger via coolant lines.
13. The snow vehicle of claim 11, wherein the heat exchanger is located above the endless track.
6. (Original) The snow vehicle of claim 5, wherein the heat exchanger is located rearward from the foot rest.
14. The snow vehicle of claim 12, wherein the heat exchanger includes a plurality of fins.
7. (Currently Amended) The snow vehicle of claim 1, further comprising a drive axle and a drive member coupled to transmit power from the prime mover to the endless track, wherein the drive axle and the drive member rotate about a drive axle axis, wherein the drive axle axis is forward of at least a portion of the foot rest.
15. (Original) The snow vehicle of claim 8, further comprising a front fork, an upright and at least one front ski, wherein the upright connects the front ski to the front fork.
8. (Currently Amended) The snow vehicle of claim [[7]] 1 wherein the prime mover includes an electric motor.
16. (Original) The snow vehicle of claim 14, wherein the at least one front ski is pivotably attached to the upright.
17. (Previously Presented) The snow vehicle of claim 1, wherein the at least one front ski is actuated by the handlebars via the front suspension assembly that includes the fork.
18. (Previously Presented) The snow vehicle of claim 8, wherein the at least one front ski is actuated by the handlebars via the front suspension assembly that includes the fork.
See the table above for a comparison between instant claim language and the reference claims, where the same language is highlighted by text formatting (e.g. bolding), with the detailed double patenting analysis presented above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Felicia L Brittman-Alabi whose telephone number is (313)446-6512. The examiner can normally be reached M-F, 9-6.
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/Felicia L. Brittman-Alabi/ Examiner, Art Unit 3611
/VALENTIN NEACSU, Ph.D./ Supervisory Patent Examiner, Art Unit 3611
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