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 with traverse of Group I, Claims 1-7 in the reply filed on 2/5/26 is acknowledged. The traversal is on the ground(s) that there is no teaching or suggestion that would lead such a person to replace the metallic end pieces (28L and 28R) of Kurakawa with chopped carbon fiber components as disclosed in Hastie; and doing so would run counter to Kurakawa's reliance on metal end pieces for structural strength at critical load-bearing locations.
This is not found persuasive because Hastie teaches composite materials that are used in motorcycle frame components (e.g., rear frames) comprising chopped carbon fiber composite resin including a random orientation of the chopped carbon fiber (i.e., chopped and randomly arranged carbon fibers linked together by means of a polymeric resin); wherein use of the chopped fiber resin systems achieves more complex shapes as compared to traditional layup composites as well as a greater stiffness-to-weight ratio when compared to conventional frames made from metal alloys without suffering a weight penalty that is typically associated with an increased stiffness-to-weight ratio (para 24, 33, 34, 61, 62, 64, 65). Hastie further teaches its methods can be used to form parts other than the frame (para 42).
Therefore, it would have been obvious to one of ordinary skill in the art to use the chopped carbon fiber composite resins of Hastie as opposed to aluminum to make the sliders or end caps of Kurakawa, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). This substitution would also provide sliders with a greater stiffness-to-weight ratio when compared to sliders or end caps made from metal alloys.
The requirement is still deemed proper and is therefore made FINAL.
Claim 8-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 2/5/26.
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.
Claim 3 is 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 3, it would have been unclear to one of ordinary skill in the art at the time of invention what is meant by the term “solid body,” e.g., that of a block of material or could the second element include grooves, mounting holes, or other discontinuities and openings and still be considered a solid body.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 7 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 7 is rejected because claim 1 states “a second composite material comprising chopped and randomly arranged carbon fibers;” but claim 7 states “offcuts of fabric of carbon fibers;” wherein offcuts of fabric would imply that of a pieces of material or fragments with a definite structure and/or a specific concentration of fiber, and therein not truly random; so Claim 7 is rejected for failing to include all the limitations of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-4 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Kurakawa et al (US 2019/0176927 A1) in view of Hastie et al (US 2017/0021888 A1).
Regarding claim 1, Kurakawa teaches an assembly for a motorcycle comprising a first element (e.g., swingarm) consisting of a first composite material comprising one or more fabrics of carbon fibers linked together by means of a polymeric resin; and a second element; wherein: the first element is bonded to the second element by means of a structural adhesive (e.g., adhered); the first element is a swingarm (25) and the second element is constrained to the swingarm and comprises a slider (e.g., end pieces) (28L, 28 R) (para 44, 106; figs 3-5)
Kurakawa fails to suggest the second element consists of a second composite material comprising chopped and randomly arranged carbon fibers linked together by means of a polymeric resin. However, Kurakawa teaches the end pieces are made from a light metal such as aluminum (para 70).
Hastie teaches composite materials that are used in motorcycle frame components (e.g., rear frames) comprising chopped carbon fiber composite resin including a random orientation of the chopped carbon fiber (i.e., chopped and randomly arranged carbon fibers linked together by means of a polymeric resin); wherein use of the chopped fiber resin systems achieves more complex shapes as compared to traditional layup composites as well as a greater stiffness-to-weight ratio when compared to conventional frames made from metal alloys without suffering a weight penalty that is typically associated with an increased stiffness-to-weight ratio (para 24, 33, 34, 61, 62, 64, 65). Hastie further teaches its methods can be used to form parts other than the frame (para 42).
Therefore, it would have been obvious to one of ordinary skill in the art to use the chopped carbon fiber composite resins of Hastie as opposed to aluminum to make the sliders or end caps of Kurakawa, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). This substitution would also provide sliders with a greater stiffness-to-weight ratio when compared to sliders or end caps made from metal alloys.
Regarding claim 2, Kurakawa teaches the first element (e.g., swingarm) is a hollow body comprising a shell made of first said composite material (abstract, para 5).
Regarding claim 3, in substituting the chopped carbon fiber composite resins of Hastie for the aluminum of Kurakawa, the second element would be made entirely of said second composite material.
In regards to the limitation “solid body,” it is noted that a change in size, scale, proportionality and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966); In Gardner V. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). MPEP 2144.04[R-1].
Changing the slider pieces of Kurakawa as modified by Hastie to that of a solid body would essentially changing the shape of the slider pieces. Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to provide the slider pieces of Kurakawa as modified by Hastie with the shape of a solid body based on the prior art's intended application as in the present invention.
Regarding claim 4, Kurakawa teaches that when fiber length in the fiber reinforced resin layers becomes shorter it’s difficult to obtain high rigidity (para 5). Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to adjust the length of the chopped carbon fibers of the second composite material to optimize the rigidity of the second composite material and therein the rigidity of the sliders.
Regarding claim 7, Hastie teaches chopped carbon fiber mats cloths (i.e., wherein said chopped carbon fibers comprise offcuts of fabric of carbon fibers) (para 61).
Claims 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Kurakawa as modified by Hastie as applied to claim 1 above, and further in view of Olson et al US (5,803,476 A).
Kurakawa as modified by Hastie teaches the assembly of claim 1
Kurakawa as modified by Hastie fails to suggest wherein the polymeric resin of said first and/or second composite material is an epoxy resin; and wherein said structural adhesive is an epoxy, acrylic, or urethane adhesive.
However, Hastie specifically teaches known composite tubular bicycle frames sometimes more closely resemble conventional, or “lug type”, bicycle frames, which are made of individual components joined together with welds, mechanical fasteners and/or adhesives; and examples of certain known bicycle frames, as well as methods for manufacturing them, are provided in U.S. Pat. No. 5,803,476. (para 5).
Olson teaches fiber reinforced polymer composite comprised of carbon fiber and epoxy resin (i.e., a known adhesive) (abstract, col 5, lines 22-29).
Therefore, it would have been obvious to one of ordinary skill in the art at the time of invention to substitute the epoxy resin for the polymeric resin in the first and/or second composite material of Kurakawa as modified by Hastie, since substituting known equivalents for the same purpose as recognized in prior art is prima facie obvious (MPEP § 2144.06 II); and, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07). This substitution comes with the additional motivation of being suggested by Hastie.
In addition, it would have been obvious to one of ordinary skill in the art at the time of invention to use the epoxy resin of Olson as the structural adhesive in the assemblies of Kurakawa as modified by Hastie, since it is prima facie obvious to select a known material based on its suitability for its intended use (MPEP § 2144.07).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN L VAN SELL whose telephone number is (571)270-5152. The examiner can normally be reached Mon-Thur, Generally 7am-6pm.
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NATHAN VAN SELL
Primary Examiner
Art Unit 1783
/NATHAN L VAN SELL/Primary Examiner, Art Unit 1783