DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant’s claim for the benefit of a prior-filed U.S. Provisional Application No. 61/706,357 (filed on 09/27/20212) under 35 U.S.C. 119(e) is acknowledged.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign that is mentioned in the description: 47a (in line 8 of the amended paragraph 0043 filed on 01/02/2026). 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. 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.
Claim Objections
Claims 14, 19, 28, 30, and 32 are objected to because of the following informalities that requires appropriate corrections:
In claim 14, line 7, the limitation “the base member, the motor” should read -- the base member, and the motor --.
In claim 14, line 9, the limitation “the derailleur” should read -- the electronic rear derailleur --.
In claim 19, line 2, the limitation “the gear housing, the transmission operated” should read -- the gear housing, wherein the transmission is operated --.
In claim 28, line 2, the limitation “the output gear, the drive arm acting” should read -- the output gear, and the drive arm acting --.
In claim 30, line 2, the limitation “the second pin, the clutch spring contacting” should read -- the second pin, and the clutch spring contacting --.
In claim 32, line 4, the limitation “the angular position” should read -- an angular position --.
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.
Claims 15-33 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 15 recites the limitation “the power source” in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 16-32 depends from parent claim 15. Subsequently, claims 16-32 are also rejected as being indefinite for the reasons set forth above.
Claim 33 recites the limitation “the function” in line 1. There is insufficient antecedent basis for this limitation in the claim. Is “the function” referring to the one or more operating parameters that can be accessed via the button (as described in parent claim 14)? Clarification by the applicant is required.
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 14-33 are rejected on the ground of nonstatutory double patenting as being unpatentable over the corresponding claims 1-23 of U.S. Patent No. U.S. Patent No. 10,040,511 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following reasons:
In regards to claim 14 of the instant application, claims 1-3 of the U.S. Patent 10,040,511 B2 disclose, an electronic rear derailleur for a bicycle comprising (“An electronic rear derailleur for a bicycle, comprising” in claim 1): a base member for attachment to a frame member of the bicycle (“a base member for attachment to a frame member of the bicycle” in claim 1); a movable member having a cage assembly attached thereto (“a movable member having a cage assembly attached thereto” in claim 1); a linkage coupling the movable member to the base member, and being operative to permit movement of the movable member relative to the base member (“a linkage coupling the movable member to the base member and configured to permit movement of the movable member relative to the base member” in claim 1); a motor positioned at the movable member, being operative to move the movable member relative to the base member, and being wirelessly controllable (“a motor positioned at the movable member, the motor configured to operate the linkage to move the movable member relative to the base member” in claim 1; “the motor is wirelessly controllable” in claim 2); and a button positioned on the movable member for accessing one or more operating parameter of the electronic rear derailleur (“a button positioned on the movable member for accessing one or more operating parameter of the electronic rear derailleur” in claim 3).
In regards to claim 15 of the instant application, claim 5 of the U.S. Patent 10,040,511 B2 disclose: a power source being removably connected to the base member (“a power supply configured to provide power to the motor, the power supply removably connected to the base member”).
In regards to claim 16 of the instant application, claim 6 of the U.S. Patent 10,040,511 B2 disclose: the linkage including an outer link and an inner link (“the linkage includes an outer link and an inner link”).
In regards to claim 17 of the instant application, claim 7 of the U.S. Patent 10,040,511 B2 disclose: the electronic rear derailleur further comprising a first pin that pivotally connects the outer link to the base member, a second pin that pivotally connects the inner link to the base member, a third pin that pivotally connects the outer link to the movable member, and a fourth pin that pivotally connects the inner link to the movable member (“a first pin that pivotally connects the outer link to the base member, a second pin that pivotally connects the inner link to the base member, a third pin that pivotally connects the outer link to the movable member, and a fourth pin that pivotally connects the inner link to the movable member”).
In regards to claim 18 of the instant application, claim 8 of the U.S. Patent 10,040,511 B2 disclose: the movable member including a gear housing (“the movable member includes a gear housing”).
In regards to claim 19 of the instant application, claim 9 of the U.S. Patent 10,040,511 B2 disclose: the electronic rear derailleur further comprising a transmission positioned in the gear housing; wherein the transmission is operated by the motor (“a transmission positioned in the gear housing, the transmission operated by the motor”).
In regards to claim 20 of the instant application, claim 10 of the U.S. Patent 10,040,511 B2 disclose: the motor being positioned in the gear housing (“the motor is positioned in the gear housing”).
In regards to claim 21 of the instant application, claim 11 of the U.S. Patent 10,040,511 B2 disclose: the motor including an output shaft with a worm disposed thereon (“the motor includes an output shaft with a worm disposed thereon”).
In regards to claim 22 of the instant application, claim 12 of the U.S. Patent 10,040,511 B2 disclose: the worm operating the transmission in order to operate an output gear of the transmission (“the worm operates the transmission to operate an output gear of the transmission”).
In regards to claim 23 of the instant application, claim 13 of the U.S. Patent 10,040,511 B2 disclose: the output gear being coupled to the inner link in order to move the movable member (“the output gear is coupled to the inner link to move the movable member”).
In regards to claim 24 of the instant application, claim 14 of the U.S. Patent 10,040,511 B2 disclose: the transmission including at least one gear that connects the worm to the output gear (“the transmission includes at least one gear connecting the worm to the output gear”).
In regards to claim 25 of the instant application, claim 15 of the U.S. Patent 10,040,511 B2 disclose: the output gear being arranged on the fourth pin (“the output gear is arranged on the fourth pin”).
In regards to claim 26 of the instant application, claim 16 of the U.S. Patent 10,040,511 B2 disclose: the output gear being arranged about the fourth pin (“the output gear is arranged about the fourth pin”).
In regards to claim 27 of the instant application, claim 17 of the U.S. Patent 10,040,511 B2 disclose: the output gear being rotatably arranged about the fourth pin (“the output gear is rotatably arranged about the fourth pin”).
In regards to claim 28 of the instant application, claim 18 of the U.S. Patent 10,040,511 B2 disclose: the electronic rear derailleur further comprising a drive arm coupled to the output gear; and the drive arm acting on the inner link to move the moveable member (“a drive arm coupled to the output gear, the drive arm acting on the inner link to move the movable member”).
In regards to claim 29 of the instant application, claim 19 of the U.S. Patent 10,040,511 B2 disclose: the drive arm contacting a projection of the inner link on a first side of the drive arm (“the drive arm contacts a projection of the inner link on a first side of the drive arm”).
In regards to claim 30 of the instant application, claim 20 of the U.S. Patent 10,040,511 B2 disclose: the electronic rear derailleur further comprising a clutch spring disposed on the second pin; and the clutch spring contacting the drive arm (“a clutch spring disposed on the second pin, the clutch spring contacting the drive arm”).
In regards to claim 31 of the instant application, claim 21 of the U.S. Patent 10,040,511 B2 disclose: the clutch spring including a free end extending toward the movable member and contacting the drive arm on a second side of the drive arm; wherein the second side of the drive arm is opposite the first side of the drive arm (“the clutch spring includes a free end extending toward the movable member and contacting the drive arm on a second side of the drive arm, wherein the second side is opposite the first side of the drive arm”).
In regards to claim 32 of the instant application, claims 22-23 of the U.S. Patent 10,040,511 B2 disclose: the electronic rear derailleur further comprising an encoder gear meshed with the output gear, a magnet holder disposed within the gear housing and being provided with a magnet that is responsive to motion of the encoder gear, and a sensor positioned to sense an angular position of the encoder gear by way of the position of the magnet (“an encoder gear meshed with the output gear” in claim 22; “a magnet holder disposed within the gear housing, the magnet holder provided with a magnet responsive to motion of the encoder gear, and a sensor positioned to sense an angular position of the encoder gear by way of a position of the magnet” in claim 23).
In regards to claim 33 of the instant application, claim 4 of the U.S. Patent 10,040,511 B2 disclose: the one or more operating parameters being a pairing function (“the parameter is a pairing function”).
Response to Arguments
With respect to applicant’s arguments in page 8 (section-III) of the remarks filed on 01/02/20269, regarding the previously set forth objections to the claims, all have been fully considered and are persuasive. Thus, said claim objections has been withdrawn. However, upon further consideration, new objections are made for claims 14, 19, 28, 30, and 32, as explained above.
With respect to applicant’s arguments in page 8 (section-III) of the remarks filed on 01/02/2026, regarding the previously set forth objections to the drawings, all have been fully considered but they are not persuasive. As noted above, line 8 of the amended paragraph 0043 (filed on 01/02/2026) include the refence character 47a, and said refence character is still not shown in the drawings.
With respect to applicant’s arguments in pages 8-9 (section-IV) of the remarks filed on 01/02/2026, regarding the previously set forth 35 U.S.C. 112(b) rejections, all have been fully considered and are persuasive. Resultingly, said rejections has been withdrawn. Nevertheless, upon further consideration, new grounds of rejections are made for claims 15-33 under 35 U.S.C. 112(b), as explained above.
With respect to applicant’s arguments in pages 8-9 (section-IV) of the remarks filed on 01/02/2026, regarding the previously set forth statutory and nonstatutory double patenting rejection for claims 1-13 (in view of U.S. Patent No. 12,054,224 B2), all have been fully considered and are persuasive. Therefore, said claim double patenting rejections has been withdrawn. However, upon further consideration, new grounds of rejections (i.e. under nonstatutory double patenting) are made for claims 15-33 in view of U.S. Patent No. 10,040,511 B2), as explained above.
With respect to applicant’s arguments in pages 8-9 (section-III) of the remarks filed on 01/02/20269, regarding the previously set forth 35 U.S.C. 102(a)(1) rejections for claims 1-2 and 12, all have been fully considered and are persuasive. Accordingly, said prior art rejections in view of in view of Ishikawa (U.S. PGPUB 2007/0037645 A1) has been withdrawn.
With respect to applicant’s arguments in pages 8-9 (section-III) of the remarks filed on 01/02/20269, regarding the previously set forth 35 U.S.C. 103 rejections for claims 3-4, 6, and 13, all have been fully considered and are persuasive. Consequently, said prior art rejections has been withdrawn.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: See the attached PTO-892 for complete list of pertinent prior art references made of record by the examiner.
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 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 RAVEEN J DIAS whose telephone number is (571) 272-2195. The examiner can normally be reached on Monday-Thursday 8:00AM - 4:30PM, Alternate Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, VICTORIA P AUGUSTINE can be reached at (313) 446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/R.J.D./Examiner, Art Unit 3654
/Victoria P Augustine/ Supervisory Patent Examiner, Art Unit 3654
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