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.
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 31-60 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 11,975,802 (hereinafter “the reference patent”). Although not all of the claims at issue are identical, they are not patentably distinct from each other because claims 31-60 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.
Independent claims 1, 11, and 21 of the reference patent, include all the limitations of independent claims 31, 41, and 51 of the instant application, while also reciting further limitations not in the corresponding claims of the application.
Regarding claim 31 of the instant application, the differences between the claims are highlighted below by bolding all limitations that are in the reference claim that are not in the instant application. There are no additions to the instant application, not in the reference patent. Claim 1 of the reference patent discloses, “A bicycle rear hub system including a direct mount derailleur, the system comprising: a rear locking mechanism including a derailleur mounting base having a pair of mounting arms, derailleur coupling housing, a derailleur bearing, a wave face axle and a rotor mount housing, the wave face axle having a splined head face, the rotor mount housing having a splined housing face and each of the mounting arms having a mounting aperture, wherein the derailleur coupling housing is positioned at least partially through both of the mounting apertures and the derailleur bearing is positioned around a hollow shaft of the wave face axle within the derailleur coupling housing such that the wave face axle is able to rotate within the derailleur coupling housing; a rear hub positioned between the splined housing face and the splined head face; and a through axle positioned through the derailleur coupling housing, the wave face axle and a central channel of the rear hub, the through axle being detachably coupled within a central aperture of the rotor mount housing; wherein when the rear locking mechanism is coupled to the rear hub, the wave face axle rotates with the rear hub as the rear hub rotates about the through axle.”
Claim 31 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of the reference patent. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 31 is anticipated by patent claim 1. All of the parts of claim 31 of the instant application are in the reference patent. Therefore, patent claim 1 of the reference patent is in essence a “species” of the generic invention of application claim 31. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Claims 32-40 are rejected on the ground of nonstatutory double patenting as being anticipated, by claims 2-10 of the reference patent, because they claim the identical invention with the exact same limitations.
Regarding claim 41 of the instant application, the differences between the claims are highlighted below by bolding all limitations that are in the reference claim that are not in the instant application. There are no additions to the instant application, that are not in the reference patent. Claim 11 of the reference patent discloses, “A rear hub locking mechanism including a direct mount derailleur, the mechanism comprising: a derailleur mounting base having a pair of mounting arms, the mounting arms each including a mounting aperture, wherein the mounting apertures are aligned so as to share a central axis; a derailleur coupling housing positioned at least partially through both of the mounting apertures; a derailleur bearing; a wave face axle having a splined head face, wherein the derailleur bearing is positioned around a hollow shaft of the wave face axle within the derailleur coupling housing such that the wave face axle is able to rotate within the derailleur coupling housing; and a rotor mount housing having a splined housing face.”
Claim 41 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of the reference patent. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 41 is anticipated by patent claim 11. All of the parts of claim 41 of the instant application are in the reference patent. Therefore, patent claim 11 of the reference patent is in essence a “species” of the generic invention of application claim 41. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention.
Claims 42-50 are rejected on the ground of nonstatutory double patenting as being anticipated, by claims 12-20 of the reference patent, because they claim the identical invention with the exact same limitations.
Regarding claim 51 of the instant application, the differences between the claims are highlighted below by bolding all limitations that are in the reference claim that are not in the instant application. There are no additions to the instant application, that are not in the reference patent. Claim 21 of the reference patent discloses, “A method of operating a bicycle rear hub system including a direct mount derailleur, the method comprising: providing a rear locking mechanism including a derailleur mounting base having a pair of mounting arms, derailleur coupling housing, a derailleur bearing, a wave face axle and a rotor mount housing, the wave face axle having a splined head face, the rotor mount housing having a splined housing face and each of the mounting arms having a mounting aperture, wherein the derailleur bearing is positioned around a hollow shaft of the wave face axle within the derailleur coupling housing such that the wave face axle is able to rotate within the derailleur coupling housing; positioning the mounting arms on either side of a rear fork end of a bicycle frame such that the mounting apertures align with a hole in the rear fork end; sliding the derailleur coupling housing at least partially through the hole and both of the mounting apertures; positioning a rear hub between the splined housing face and the splined head face; sliding a through axle through the hollow shaft of the wave face axle, the hole, the mounting apertures, the derailleur coupling housing and a central channel of the rear hub; and detachably coupling the axle within a central aperture of the rotor mount housing.”
Claim 51 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 21 of the reference patent. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 51 is anticipated by patent claim 21. All of the parts of claim 51 of the instant application are in the reference patent. Therefore, patent claim 21 of the reference patent is in essence a “species” of the generic invention of application claim 51. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention.
Claims 52-60 are rejected on the ground of nonstatutory double patenting as being anticipated, by claims 21-30 of the reference patent, because they claim the identical invention with the exact same limitations.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. (US-20160311256-A1, Hara; Nobukatsu), (US-20060158022-A1, Nicolai; Karlheinz), (US-6736464-B1, Pidoux; Laurent).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOWARD BINNS whose telephone number is (571)272-9456. The examiner can normally be reached Mon-Fri 8:00 - 5:00.
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/HOWARD PATRICK BINNS/Examiner, Art Unit 3615
/S. Joseph Morano/Supervisory Patent Examiner, Art Unit 3615
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