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 .
DETAILED ACTION
Examiner’s Comments
This action is in response to applicant’s amendment received 7/7/2026.
Applicant’s amendment has remedied all matters pertaining to indefiniteness in the previous office action and the rejections made under the second paragraph of 35 U.S.C. 112 in the previous office action are hereby withdrawn.
The Examiner notes that the office action below may reference support found in the cited prior art by indicating element numbers, figures or by pointing out a specific paragraph (PAR) number in which support can be found. The PAR number referenced corresponds to paragraph number beginning in the "Detailed Description" of the disclosure unless otherwise noted. The pending claims remain 1-11.
Claim Rejections - 35 USC § 102
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 1-4, 8-11, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2014/0263506 to Kishi et al.
With regard to claim 1, a vehicle (10) comprising a frame, a saddle (15) movable relative to the frame (via cylinder 141, PAR 0071), and at least one removable bag (111), wherein said removable bag comprises at least one hook-like element (131-133, fig. 5, PAR 0060) insertable into a corresponding opening of the frame (121-123, PAR 0054, 0065 disclose bag attachable to frame) and adapted to cooperate with a portion of the saddle to stably connect said bag to said frame (PAR 0060 discloses bags 111 attached to rear frame, covered by saddle 15, i.e. under saddle 15).
With regard to claim 2, wherein said saddle portion is a protuberance that protrudes underneath the saddle (fig. 5 shows protuberances extending underneath saddle 15).
With regard to claim 3, wherein the saddle (15) is connected or connectable to the frame and configured to assume an open position, in which the saddle is at least partially detached from the frame, and a closed position, in which the saddle is entirely constrained to the frame (PAR 0071 discloses saddle 15 wherein turning 141, “causes movement of seat 15 and opens rear portion of vehicle”, i.e. saddle 15 is partially detached and wherein when locked via 141, saddle 15 is closed).
With regard to claim 4, wherein, when the saddle (15) is in the closed position, said protuberance occludes a first part of the opening of the frame leaving a second part of the opening free, and, when the saddle is in the open position, said opening is entirely free (PAR 0060 discloses openings 121-123 are hidden by, i.e. occluded by saddle 15).
With regard to claim 8, wherein there are two openings, a first opening that faces the right side of the vehicle, and a second opening that faces the left side of the vehicle (fig. 4, PAR 0060, discloses openings 121-123 facing both left and right sides of vehicle).
With regard to claims 9-10, comprising further attachments and/or supports of the at least one removable bag (15) to the vehicle (PAR 0086+, figs. 1, 4, disclose passenger foot support bracket 58 attached at location of bag attachment opening 121).
With regard to claim 11, wherein said saddle (15, fig. 1) is a saddle shaped to accommodate both the driver and the passenger or a saddle shaped to accommodate only the passenger.
Claim Rejections - 35 USC § 103
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 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 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 of this title, 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.
Claims 5-7, are rejected under 35 U.S.C. 103 as being unpatentable over US 2014/0263506 to Kishi et al in view of US 4,266,703 to Litz.
As discussed above and with regard to claims 5-7, Kishi discloses the invention substantially as claimed including a vehicle (10) comprising a frame and at least one removable bag (111), wherein said removable bag comprises at least one hook-like element (131-133, fig. 5, PAR 0060) insertable into a corresponding opening of the frame. While Kishi discloses a hook-like element (131-133, fig. 5), Kishi does not explicitly show wherein said hook-like element comprises a stem and an end portion having a width greater than the width of the stem; and wherein said stem is shaped to at least partially fill said first part of the opening when the saddle is in the closed position; and wherein said end portion of the hook-like clement is shaped so as not to pass through said first part of the opening when the saddle is in the closed position. Bags are attached to vehicles in a variety of ways and Litz discloses a removeable bag (15, figs. 1-3) wherein the bag is attached to the vehicle frame via a hook-like element (16) in a slot opening (11). Litz further shows hook-like element (16) to have a stem portion with a wider end portion and wherein said stem is shaped to at least partially fill said first part of the slot opening; and wherein said end portion of the hook-like element is shaped so as not to pass through said first part of the opening; and wherein the above occurs when the saddle is in the closed position (again, see Litz, figs. 1-3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the clamed invention to apply the teachings of Litz to Kishi. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, for the purpose of providing an alternative method of removably attaching a bag to the frame of a vehicle.
Response to Arguments
Applicants’ arguments filed 7/7/2026 have been fully considered but they are not persuasive.
With regard to claim 1, applicant contends, inter alia, that Kishi does not teach, suggest, or anticipate the claimed invention. Specifically, Kishi does not disclose a removable bag insertable into an opening of the frame and that the rear fender and cowl of the motorcycle vehicle. The Examiner acknowledges applicant’s position; however, a reference is deemed to properly anticipate a claim when all the recited limitations are disclosed therein. While it could be argued that the fender and cowl could be considered mountable portions of the vehicle frame, in this instance, Kishi clearly discloses (PAR 0048) that the saddle bags may be alternatively attached to the rear frame. In response to Kishi not disclosing the removable bag “adapted to cooperate with a portion of the saddle to stably connect said bag to the frame”, i.e. Kishi does not disclose a mechanical and/or structural cooperation between the bag and frame providing a stable connection; it is noted that the features upon which applicant relies (underlined above) are not so narrowly defined by the claim. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). For the reasons above, the grounds for rejection are deemed proper.
Applicants contend, inter alia, that Kishi in view of Litz does not obviate the claimed invention. Examiner acknowledges applicant’s position; however, a reference and/or references is/are deemed to properly obviate a claim when the prior art reference (or references when combined) teach or suggest all the claim limitations. In this instance, applicant argues that Kishi in view of Litz falls short for the same reasons that Kishi does not anticipate the limitations of claim 1 and the addition of Litz does not obviate the limitations of claim 1. As explained above, Kishi clearly anticipates all the limitations of claim 1. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
In this case, Kishi does not explicitly show wherein said hook-like element comprises a stem and an end portion having a width greater than the width of the stem; and wherein said stem is shaped to at least partially fill said first part of the opening when the saddle is in the closed position; and wherein said end portion of the hook-like clement is shaped so as not to pass through said first part of the opening when the saddle is in the closed position. Bags are attached to vehicles in a variety of ways and Litz discloses a removeable bag (15, figs. 1-3) wherein the bag is attached to the vehicle frame via a hook-like element (16) in a slot opening (11). Litz further shows hook-like element (16) to have a stem portion with a wider end portion and wherein said stem is shaped to at least partially fill said first part of the slot opening; and wherein said end portion of the hook-like element is shaped so as not to pass through said first part of the opening; and wherein the above occurs when the saddle is in the closed position (again, see Litz, figs. 1-3). It would have been obvious to one having ordinary skill in the art before the effective filing date of the clamed invention to apply the teachings of Litz to Kishi. A person of ordinary skill would have been motivated to do so, with a reasonable expectation of success, for the purpose of providing an alternative method of removably attaching a bag to the frame of a vehicle. For the reasons above, the grounds for rejection are deemed proper.
Conclusion
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 replying 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 extension fee 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.
A shortened statutory period for replying 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Brian Nash whose telephone number is 571-272-4465. The examiner can normally be reached on Monday – Friday from 8 a.m. to 4 p.m. EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Nathan Newhouse can be reached at 571-272-4544. The official fax number for this Group is: 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. For more information about the PAIR system, see www.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/BRIAN D NASH/
Primary Examiner, Art Unit 3734
9/21/2026
Prosecution Insights