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 .
Status of the Claims
Applicant’s amendment filed 07/01/26 (hereinafter Response) has been entered. Examiner notes that claims 1-3 have been amended, claims 4-5 and 8-9 have been cancelled, and claim 10 is new. Claims 1-3, 6-7, and 10 remain pending in the application.
Claim Objections
Based on the amendments to the claims the claim objections raised in the non-final office action mailed 4/1/26 (hereinafter Office Action) are withdrawn. However, based on the amendments a new objection is now raised.
Claim 10 is objected to because of the following informalities:
“between the down to and the seat tube” should be and is interpreted as “between the down [[to]]tube and the seat tube”
Appropriate correction is required.
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.
Claim Rejections - 35 USC § 112
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.
Claim 3 is 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 3, which depends from claim 1 which embodies the embodiment of fig. 3 as explicitly stated in ¶1 of Applicant’s remarks included in the Response did not originally include the claimed abutment arrangement. In fact, [0017] of Applicant’s PG PUB explicitly states that it does not include the abutment arrangement, therefore dependent claim 3 is interpreted as reciting new matter.
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 10 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 10, the phrase “the resilient member of the support structure” renders the claim indefinite because the term “the support structure lacks antecedent basis. Did applicant mean “the support arrangement”?
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 6, and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by DE 102013107623 A1 to PÜMER.
Regarding claim 1, PÜMER discloses a frame arrangement for a bicycle (Fig. 1) that is supported in technical driving terms by an electric motor (3) (Fig. 1 & [0017]), the frame arrangement comprising:
a frame (1) that has at least one seat tube (17), a down tube (12) and a top tube (11) (Figs. 2-3 & [0017]),
a rear structure (2) that is connected to the seat tube (17) and that has a resilient member (4) (Fig. 2 & [0017]),
the down tube (12) and the seat tube (17) being connected to each other by the top tube (11) and by a support arrangement (15) (Figs. 1-6 & [0008], [0017] and [0024] disclose the DT and ST are connected to the support arrangement 15),
retention means (A,153,155,42) for the electric motor (3) being provided in a region of the support arrangement (15), the electric motor (3) including at least one housing (15), the housing (15) of the electric motor (3) exclusively forming the support arrangement (15) between the down tube (12) and the seat tube (17) and the housing (15) being connected to the seat tube (17) and the down tube (12) via the retention means (A,153,155,42), the housing (15) of the electric motor (3) comprising retention means (42) for the resilient member (4) of the rear structure (2), and the resilient member (4) is operatively connected to the retention means (42) on the housing (15) of the electric motor (3) (Annotated Fig. 4 and Figs. 2, 5, and 6 & [0008], [0017], and [0024] disclose that the carrier is connected to the seat tube, the downtube, the rear
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[AltContent: textbox (Annotated)]shock and the motor.).
Regarding claim 3, depending on claim 1, PÜMER further discloses wherein the support arrangement (15) has an abutment arrangement (B) that extends above the electric motor (3) (Annotated Fig. 4).
Regarding claim 6, depending on claim 1, PÜMER further discloses wherein a side (153) of the housing (15) facing away from the top tube (11) adjoins a side (121), of the down tube (12) facing away from the top tube (11) (Annotated Fig. 4 and Fig. 2, 5, and 6).
Regarding claim 7, PÜMER further discloses an electric bicycle (Fig. 1) having the frame arrangement of claim 1 (Fig. 1 & [0001] and [0017]. See also above rejection of claim 1).
Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20170313381 A1 to Mano.
Regarding claim 10, Mano discloses a frame arrangement for a bicycle (10) that is supported in technical driving terms by an electric motor (20) (Fig. 1 & [0043] disclose the motor 20 is attached to the frame 12 via the bracket 125. Further under a broadest reasonable interpretation the bicycle cannot be ridden without the motor because the cranks and pedals are inserted through the motor 20 and thus in a technical driving sense the motor supports the bicycle), the frame arrangement comprising:
a frame (12) that has at least one seat tube (124), a down tube (123) and a top tube (122),
a rear structure (30) that is connected to the seat tube (124) and that has a resilient member (304), the down tube (123) and the seat tube (124) being connected to each other by the top tube (122) and by a support arrangement (125) (Figs. 1 and 6 & [0035], [0044], and [0050]-[0051]),
retention means (62) for the electric motor (20) being provided in a region of the support arrangement (125), the electric motor (20) including at least one housing (21), the housing (21) of the electric motor (20) forming a portion of the support arrangement (125) between the down tube (123) and the seat tube (124), and the housing (21) being connected to the seat tube (124) and the down tube (123) via the retention means (62) (Figs. 1, 6, and 8 & [0059]-[0060] and [0133]-[0134]),
the support arrangement (125) having an abutment arrangement (1252) that extends above the electric motor (20) (Figs. 1-2 and 7 & [0106]), and
the abutment arrangement (1252) comprising retention means (1253) for the resilient member (304) of the support structure (125), the resilient member (304) being connected operatively to the abutment arrangement 91252) via the retention means (1253) (Fig. 9 & [0055] and [0110]).
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.
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 nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over PÜMER in view of Mano.
Regarding claim 2, depending on claim 1, PÜMER does not appear to disclose that the housing of the electric motor is a metal housing.
Mono teaches that it was old and well known in the art of electric bike, before the effective filing date of the claimed invention, for the housing (21) of the electric motor (20) is a metal housing (Fig. 1 & [0060]).
Therefore, it would have been obvious to one of ordinary skill in the art of electric bikes before the effective filing date of the claimed invention to modify the electric bike disclosed by PÜMER to incorporate for the housing of the electric motor is a metal housing as taught by Mono in order to provide a lightweight durable and rigid housing for the bike, as would be understood by a person of ordinary skill in the art before the effective filing date of the claimed invention, and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 CHRISTOPHER B WEHRLY whose telephone number is (303)297-4433. The examiner can normally be reached Monday - Friday, 8:30 - 4:30 MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at (571) 272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER B WEHRLY/Primary Examiner, Art Unit 3611
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