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 .
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.
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Claims 1-30 of the instant application (18/803,200, hereinafter: Application A) are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of (U.S. Patent No. US12059923B1 Casper Hendrik Badenhorst, hereinafter: “the reference patent”). Although not all of the claims at issue are identical, they are not patentably distinct from each other because claims 1-30 under examination are anticipated, by claims 1-30 of the reference patent. Every limitation in the application under examination claims is recited in the conflicting reference patent claims, and the differences between the claims are highlighted below.
Claims 1, 11, 12 and 21 of the reference patent, include all the limitations of claims 1, 11, 12 and 21 of the instant application, while also reciting further limitations not in the corresponding claims of the application, which are met by additional obviousness rejections.
Claims 2-10, 14-16, 18, and 20 are rejected on the ground of nonstatutory double patenting as being anticipated, by claims 2-10, 14-16, 18, and 20 of the reference patent, because they claim the identical invention with the exact same limitations.
Regarding claim 1 of Application A, the differences between the claims are highlighted below by bolding all limitations that differ. Claim 1 of the reference patent discloses, “A bicycle rear hub system comprising: a rear locking mechanism including a wave face axle, a rotor mount bearing and a rotor mount housing, the wave face axle having a hollow shaft coupled to a splined head face that faces away from the hollow shaft and the rotor mount housing having a splined housing face, a plurality of rotor apertures for coupling to a brake rotor and a rotor mount inner cavity, wherein the rotor mount bearing is positioned within the rotor mount inner cavity and the splined housing face faces and is parallel with the splined head face; a rear hub positioned between the splined housing face and the splined head face; and a through axle positioned through the hollow shaft of the wave face axle and a central channel of the rear hub and detachably coupled within a central aperture of the rotor mount housing; wherein when the locking mechanism is coupled to the hub, the wave face axle, the rear hub and the through axle are all able to rotate together.”
The claim 1 of Application A, is broader than claim 1 of the reference patent.
Claim 1 of Application A does not disclose:
a rotor mount bearing
a splined head face that faces away from the hollow shaft
a plurality of rotor apertures for coupling to a brake rotor and a rotor mount inner cavity
the rotor mount bearing is positioned within the rotor mount inner cavity
the splined housing face faces and is parallel with the splined head face.
However, every limitation in claim 1 of the application under examination is recited in claim 1 of the conflicting reference patent.
Regarding claim 11 of Application A, the differences between the claims are highlighted below by bolding all limitations that differ. Claim 11 of the reference patent discloses, “A rear hub locking mechanism comprising: a wave face axle having a hollow shaft coupled to a splined head face that faces away from the hollow shaft, wherein the hollow shaft is sized to receive a through axle; a rotor side bearing axle; a rotor mount bearing; and a rotor mount housing having a central aperture, a splined housing face, a plurality of rotor apertures for coupling to a brake rotor, and a rotor mount inner cavity, wherein an end face of the rotor side bearing axle faces towards the central aperture within the rotor mount inner cavity and the rotor mount bearing is positioned around a perimeter of the end of the rotor side bearing axle within the rotor mount inner cavity, the splined housing face faces and is parallel with the splined head face, and an axis of the hollow shaft is aligned with a center of the central aperture of the rotor mount housing.” Every limitation in claim 11 of the application under examination is recited in claim 11 of the conflicting reference patent.
Claim 12 is rejected on the grounds of non-statutory double patenting as being unpatentable over claim 12 in further view of claim 11 of the reference patent. Claim 12 of the reference patent recites, “The rear hub locking mechanism of claim 11, wherein the hollow shaft includes an inner ledge that narrows a circumference of the hollow shaft.” The reference patent does not disclose the wave face axle has a hollow shaft. However, claim 11 of the reference patent states, “a wave face axle having a hollow shaft”, which is the same part (2718, fig 27C) in both Application A and the reference patent. Thus the “hollow shaft” of claim 12 of the reference patent is patentably the same as the “wave face axle”, of claim 12 of Application A, an obviousness rejection using claim 12 further in view of claim 11.
Regarding claim 13, the reference patent claim 13 discloses, “A rear hub locking mechanism comprising: a wave face axle having a hollow shaft coupled to a splined head face that faces away from the hollow shaft, wherein the hollow shaft is sized to receive a through axle; a rotor mount bearing; a rotor mount housing having a central aperture, a splined housing face, a plurality of rotor apertures for coupling to a brake rotor, and a rotor mount inner cavity, wherein the rotor mount bearing is positioned within the rotor mount inner cavity, the splined housing face faces and is parallel with the splined head face,…” which is patentably the same as claim 11 of application A. It continues: “and an axis of the hollow shaft is aligned with a center of the central aperture of the rotor mount housing; and one or more wave face axle bearings positioned around the hollow shaft of the wave face axle and within a non-rotor housing surrounding a perimeter of the wave face axle proximate the splined head face.” Claim 13 of application A states, “the rear locking mechanism of claim 11, further comprising one or more wave face axle bearings positioned around the hollow shaft of the wave face axle and within a non-rotor housing surrounding a perimeter of the wave face axle proximate the splined head face.” Which is identical to the rest of claim 13 of Application A, thus claim 13 of the reference patent anticipates claim 13 of the application.
Regarding claim 17 of application A, claim 17 of the reference patent again re-states all of claim 11, then continues: “a hanger bearing; and a hanger housing, the hanger housing having an inner chamber and an exterior coupling mechanism for detachably coupling with a derailleur, wherein the hanger bearing is positioned within the inner chamber around the hollow shaft of the wave face axle.” Claim 17 of application A states, “The rear hub locking mechanism of claim 11, further comprising a hanger bearing and a hanger housing, the hanger housing having an inner chamber and an exterior coupling mechanism for detachably coupling with a derailleur, wherein the hanger bearing is positioned within the inner chamber around a hollow shaft of the wave face axle.” Which is identical to the rest of claim 17 of Application A, thus claim 17, further-in-view-of claim 11 and 12 of the reference patent, anticipates claim 17 of the application.
Regarding claim 19 of application A, claim 19 of The reference patent states, ” The rear hub locking mechanism of claim 13, wherein an exterior surface of the non-rotor housing has a plurality of housing splines, further comprising a gearbox interface gear having a central aperture and a plurality of interface gear splines along the perimeter of the central aperture, wherein the gearbox interface gear is removably positioned around the non-rotor housing such that the housing splines slide between the interface gear splines.” Claim 19 of the instant application differs from claim 19 of the reference patent in that it recites a “central gear aperture”. However, the instant disclosure at page 3, paragraph 2 discloses a “gearbox interface gear having a central aperture”. Which shows that a “central gear aperture” falls within the broadest reasonable interpretation of the category encompassed by “central gear aperture”. Thus, the “central aperture” of the reference patent claim 19 anticipates the “central gear aperture” of claim 19 of the instant application.
Regarding claim 21 of Application A, claim 21 of the reference patent discloses, “A method of operating a bicycle rear hub system, the method comprising: providing a rear locking mechanism including a wave face axle, a rotor mount bearing and a rotor mount housing, the wave face axle having a hollow shaft coupled to a splined head face that faces away from the hollow shaft and the rotor mount housing having a splined housing face, a plurality of rotor apertures for coupling to a brake rotor and a rotor mount inner cavity, wherein the rotor mount bearing is positioned within the rotor mount inner cavity and the splined housing face faces and is parallel with the splined head face; positioning a rear hub between the splined housing face and the splined head face; and positioning a through axle through the hollow shaft of the wave face axle and a central channel of the rear hub and detachably coupled within a central aperture of the rotor mount housing; wherein when the locking mechanism is coupled to the hub, the wave face axle, the rear hub and the through axle are all able to rotate together.” Claim 21 of Application A does not disclose:
a rotor mount bearing
a splined head face that faces away from the hollow shaft
a plurality of rotor apertures for coupling to a brake rotor and a rotor mount inner cavity
the rotor mount bearing is positioned within the rotor mount inner cavity
the splined housing face faces and is parallel with the splined head face.
However, every limitation in claim 21 of the application under examination is recited in claim 21 of the conflicting reference patent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Hara (US 20160311256A1) and Pidoux (US 6736464B1) teach a removable wheel and hub that leaves the brake disc and gears attached to the frame of the bicycle.
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/HOWARD PATRICK BINNS/Examiner, Art Unit 3615
/S. Joseph Morano/Supervisory Patent Examiner, Art Unit 3615
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