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 as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 16. Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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
Claim 1 is objected to because of the following informalities: Line two should read “orthogonal to a ground” and line 4 should read “perpendicular tothe ground” for the purpose of grammatical clarity and consistency. Appropriate correction is required.
Claim 14 is objected to because of the following informalities: Line 5 should read “attaching the skid plate to either of a frame or of or an exhaust pipe of the motorcycle” or the like for the purpose of grammatical accuracy and consistency.
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 8 and 18 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 8 depends from claim 7 which recites “wherein the intermediate portion is a flat portion […] such that an entirety of the skid plate is flat”. Claim 8 then recites “wherein the intermediate portion further includes an angled portion in addition to the flat portion such that the skid plate extends the skid portion at an angle non-parallel with the attachment portion” which renders the claim indefinite because it directly contradicts the requirements of the claim from which it depends wherein an entirety of the skid plate is flat.
Claim 18 recites “ wherein the load-distributing cutout pattern includes an “X”” which renders the claim indefinite because claim 18 depends from claims 16 and 14 which do not recite a load-distributing cutout pattern. Claim 15 recites a load-distributing cutout pattern”. It is unclear if claim 18 was meant to depend from claim 15 or if it was meant to newly recite a load-distributing cutout pattern.
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, 14, 16, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Galbraith (US 6349783 B1).
In regards to claim 1: Galbraith teaches a motorcycle (10), comprising:
a frame (12) with a front wheel (16) and a rear wheel (20) defining a vertical plane orthogonal to ground when the front wheel is parallel with the rear wheel and the motorcycle is perpendicular to a ground (shown in Figure 1);
a seat (14) positioned atop the frame (seat 14 above frame 12 in Figure 1); and
a skid plate (116, 118, and 120) positioned adjacent to the rear wheel (Examiner notes that the skid plate and rear wheel are not shown together in any of the figures, however, the mounting system 82 that attaches the skid plate uses a bracket 84 on the inside surface of the rear fender 32 which is necessarily adjacent to the rear wheel as shown in Figure 1, See Column 3 lines 58-62: “The illustrated saddlebag mounting system 82 overcomes this problem by mounting, on both sides of the motorcycle, an inner bracket 84 to the inside surface of the rear fender 32, and mounting the saddlebag 86 to an outer bracket 88 that is connected to the inner bracket 84.”), said skid plate connected to the motorcycle (See at least Figures 10 and 11) with a skid portion (118 and 120) extending outwardly from the vertical plane and extending further from said vertical plane than any rear component of the motorcycle when the motorcycle stands perpendicular to the ground in the vertical plane (Examiner notes that the skid plate is not shown in a Figure with the motorcycle as a whole. Nevertheless, in Figures 4, 7, and 8 it can be seen that lights 76 form the widest part of the rear portion of the motorcycle when viewed from a top down from a central vertical plane created by the front and rear wheels. In Figure 11 it can be seen that at least 116 and 118 extend further out from the vertical plane than the lights 76, shown consistent with at least Figures 4, 7, and 8, but not labeled in Figure 11.)
In regards to claim 14: Galbraith teaches a skid plate (116, 118, and 120), comprising:
an attachment portion (84) for attaching to a motorcycle (Column 3 lines 63-65: “More specifically, the inner bracket 84 is fastened to the inner support 46 that is connected to the inside surface of the rear fender 32.”);
an intermediate portion (116) extending from the attachment portion (See Figure 9);
a skid portion (120) extending to a distal edge from the attachment portion (See Figure 9);
wherein attaching the skid plate to either of a frame or of an exhaust pipe of the motorcycle (attached via attachment portion 84 to frame portion 46) would result in the distal edge of the skid portion contacting a ground or foreign obstruction before other components of the motorcycle when the motorcycle tips toward a side that the skid plate is attached. Examiner notes that the claim requires that the skid portion would contact a ground or foreign obstruction before other components of the motorcycle. The claim does not require that it contact a ground or foreign obstruction before all other components or specify which components. As seen in Figures 9 and 11, during a lean the skid plate would contact the ground before at least component 32. Furthermore, whether the skid portion is first to come in contact with a foreign obstruction is fully dependent on the height, size, location, or otherwise of the foreign obstruction, for instance a rock could fly up and hit the skid plate before contacting the saddle bag, exhaust pipe, fender, wheel, etc... Examiner additionally notes that 120 is not referred to as a skid portion or skid plate in the prior art reference. However, it is a plate attached directly under a saddlebag and in the case of a sharp turn or lean where a saddlebag or component of the motorcycle may hit the ground, the plate 120 could contact the ground first (depending on turn angle, curbs or other obstacles, as well as size of the bag) thereby protecting the bag or motorcycle components from contact with the ground.
In regards to claim 16: The skid plate of claim 14 is taught by Galbraith. Galbraith further teaches wherein the intermediate portion (116) extends parallel from the attachment portion (See Figure 9 where intermediate portion 116 extends from attachment portion 84, parallel with itself (see front and back parallel portions of 116). Examiner notes that the claim language does not require the intermediate portion to be parallel with the attachment portion.
In regards to claim 17: The skid plate of claim 14 is taught by Galbraith. Galbraith further teaches wherein the intermediate portion comprises an angled portion (See Figure 9, examiner notes that 116 is necessarily arranged at an angle relative to the ground, motorcycle, and other components. However, the claim does not specify or require what the angled portion is relative to. Examiner takes the position that it is an angled portion because it is arranged at an angle (unspecified) relative to the ground and other motorcycle components.) such that the skid portion extends at an angle other than parallel from the attachment portion (See Figure 9 where 120 is not parallel with 84).
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.
Claims 2, 3, 11, 12, 13, 15, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Galbraith in view of Uimonen (US 2022/0041238 A1).
In regards to claims 2 and 15: The motorcycle of claim 1 and the skid plate of claim 14 respectively are taught by Galbraith in view of Uimonen. Galbraith does not explicitly teach wherein the skid plate includes a load-distributing cutout pattern. However, Uimonen teaches a skid plate (25a in Figure 4) supported adjacent the rear wheel of a bicycle for supporting objects (Paragraphs 0035 and 0036: “extension supporting plates” that includes a load-distributing cutout pattern (see cutouts of 25a in Figure 4).
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to additionally have a load distributing cutout pattern as in Uimonen on the skid plate of Galbraith so as to reduce the weight added to the vehicle by the skid plate, increase aesthetic appeal, and increase traction between the plate and the object supported by the plate so as to reduce the possibility of an object sliding around or off of the plate thereby creating a safer and more aesthetic skid plate.
In regards to claim 3: The motorcycle of claim 2 is taught by Galbraith in view of Uimonen. The combination further teaches wherein the skid plate includes an attachment portion including a tab (raised sections of 84 in Figure 9 of Galbraith) and an aperture (104 of Galbraith).
In regards to claim 11: The motorcycle of claim 2 and is taught by Galbraith in view of Uimonen. The combination fails to teach wherein the cutout pattern includes an “X”. However:
In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.) See MPEP 2144.04 Paragraph IV. Section B
In the case of the instant application, the cutout pattern is a matter of choice which a person of ordinary skill in the art would have found obvious. The specification of the instant application describes several different cutout patterns as well as states that a cutout pattern is optionally not required (Paragraph 0074) and does not describe any benefit or critical reasoning for why an “X” shaped cutout would be preferred over the other cutout patterns described or no cutout. Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to modify the load-distributing cutout pattern of Galbraith in view of Uimonen as a matter of aesthetic design choice or to allow for ease in manufacturing thereby allowing for a more personalized product for the user.
In regards to claim 12: The motorcycle of claim 2 is taught by Galbraith in view of Uimonen. The combination further teaches wherein the load-distributing cutout pattern includes a series of parallel slots (See parallel slots of 25a in Figure 4 of Uimonen).
In regards to claim 13: The motorcycle of claim 2 is taught by Galbraith in view of Uimonen. The combination further teaches wherein the load-distributing cutout pattern includes a grid pattern (See grid pattern of parallel slots of 25a in Figure 4 of Uimonen).
In regards to claim 18: The skid plate of claim 16 is taught by Galbraith. Galbraith fails to teach a load-distributing cutout pattern including an “X”. However, Uimonen teaches a skid plate (25a in Figure 4) supported adjacent the rear wheel of a bicycle for supporting objects (Paragraphs 0035 and 0036: “extension supporting plates” that includes a load-distributing cutout pattern (see cutouts of 25a in Figure 4).
Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to additionally have a load distributing cutout pattern as in Uimonen on the skid plate of Galbraith so as to reduce the weight added to the vehicle by the skid plate, increase aesthetic appeal, and increase traction between the plate and the object supported by the plate so as to reduce the possibility of an object sliding around or off of the plate thereby creating a safer and more aesthetic skid plate.
Furthermore, the combination fails to explicitly teach an “X”. However, In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.) See MPEP 2144.04 Paragraph IV. Section B
In the case of the instant application, the cutout pattern is a matter of choice which a person of ordinary skill in the art would have found obvious. The specification of the instant application describes several different cutout patterns as well as states that a cutout pattern is optionally not required (Paragraph 0074) and does not describe any benefit or critical reasoning for why an “X” shaped cutout would be preferred over the other cutout patterns described or no cutout. Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success before the effective filing date of the claimed invention to modify the load-distributing cutout pattern of Galbraith in view of Uimonen as a matter of aesthetic design choice or to allow for ease in manufacturing thereby allowing for a more personalized product for the user.
Claims 4 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Galbraith in view of Uimonen and further in view of Laivins (US 2020/0269944 A1).
In regards to claim 4: The motorcycle of claim 3 is taught by Galbraith in view of Uimonen. The combination further teaches an exhaust pipe (Claim 10 of Galbraith) operatively coupled to the motorcycle (Claim 10 of Galbraith: an exhaust pipe coupled to said motorcycle for expelling exhaust gases) Examiner notes that Galbraith does not describe the connection of the exhaust pipe to the motorcycle and/or frame. However, examiner takes the position that “coupled to the motorcycle” would necessarily include a direct or indirect (via other components) coupling to the frame and notes that a direct coupling is not required by the claim. The combination does not explicitly teach the exhaust pipe outside of the rear wheel. However, Laivins depicts a motorcycle (Figure 1) with a saddlebag (30) and an exhaust pipe (21) that is outside of the rear wheel (Figure 1). Therefore, it would have been obvious to one of ordinary skill in the art with a reasonable expectation of success to place the exhaust pipe of Galbraith in view of Uimonen outside of the rear wheel as in Laivins so as to avoid contact with the rear wheel thereby preventing damage or heat buildup caused by the exhaust pipe.
In regards to claim 5: The motorcycle of claim 4 is taught by Galbraith in view of Uimonen and Laivins. The combination further teaches wherein the skid plate includes an intermediate portion (116 of Galbraith) disposed between the skid portion and the attachment portion (shown in Figure 9 of Galbraith).
Allowable Subject Matter
Claims 6, 7, 9, 10, 19, and 20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 6 and 19 recite wherein the intermediate portion is curved around an exhaust pipe of the motorcycle. The prior art fails to teach or suggest this limitation in the claims. Galbraith teaches an exhaust pipe in claim 10 but does not describe its location or how other components interact with it. The exhaust pipe relied upon in the Laivins reference is located well below the saddlebag and skid plates and would not require a portion of the skid plate to be curved around it. There would be no motivation to modify the combination of Galbraith and Uimonen to also have the intermediate portion (116 of Galbraith) curve around an exhaust pipe when Galbraith already teaches an exhaust pipe, though not shown, and the intermediate 116 is not shown or discussed to be curving around the exhaust pipe. Additional art was not found to teach the limitations as claimed. Claim 20 depends from claim 19 and is therefore considered to contain allowable subject matter.
Claim 7 recites wherein the intermediate portion is a flat portion and a continuous extension of the skid portion, such that an entirety of the skid plate is flat. The prior art fails to teach an entirely flat skid plate attached to a frame or exhaust pipe of a motorcycle where the skid plate extends further from the vertical plane created by the two wheels than any other rear component of the motorcycle. The prior art of Galbraith does not teach an entirely flat skid plate. There is no teaching, suggestion, or motivation to modify Galbraith to consist of an entirely flat skid plate. Additional art, such as Mann (US 2009/0206624A1) and Leong (WO 2022/220744 A1) both teach a flat plate on the bottom of a storage container on the side of a motorcycle but fails to teach that the plate extends further out than all other rear components of the motorcycle. Saiki (JP 09249169 A) teaches a guard for a saddle bag that sticks out further than other rear component shown on the motorcycle (see Figure 3) but the guard is a tubular bar, and there would be no motivation to modify the bar arrangement of Saiki to be a flat plate. Claims 8-10 depend from claim 7 and are therefore also considered to have allowable subject matter.
Claim 8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Claim 8 depends from claim 7 indicated allowable for the reasons above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Campbell (US 10953944 B1) teaches a bracket for mounting a saddle bag with a bottom plate portion. Bagnariol (US 7658395 B2) teaches flat support brackets on a motorcycle for saddlebags that do not extend further than other rear components of the vehicle. Knoch (US 2008/0083801 A1) teaches a tubular saddlebag support. Kramer (US 4163513) teaches a motorcycle with an outer protection bar around the saddlebags.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ABIGAIL R HYMEL whose telephone number is (571)272-0389. The examiner can normally be reached Generally M-F 7:30-4:30.
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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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/ABIGAIL R HYMEL/Examiner, Art Unit 3611
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