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
This is the first action on the merits for application 18/888114. Claims 1-20 are currently pending in this application.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
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 1-3, 5-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12122479. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claim elements are claimed in the patent.
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.
Claim(s) 1-5, 8-10 is/are rejected under 35 U.S.C. 102a1 as being anticipated by BRAEDT (2019/0322333).
Regarding Claim 1, BRAEDT teaches A rear derailleur (10) for coaxial mounting with respect to a rear wheel axis (A) to a frame dropout of a rear frame (1), the rear derailleur comprising: a rigid base element including an inner mounting arm (22a) having an inner pivot joint for inboard arrangement in the region of the frame dropout, and an outer mounting arm (22b) having an outer pivot joint coaxially aligned with the inner pivot joint for outboard arrangement in the region of the frame dropout, and the base element (20)(60) being connectable to the rear frame (1) so as to be pivotable coaxially about the rear wheel axis (A) by the inner pivot joint and outer pivot joint; a shifting element (40) for changing gears, the shifting element (40) including a swivel formation (30) pivotably connecting the base element (20)(60) and the shifting element (40) wherein the shifting element (40) is translatory pivotably movable relative to the base element (20)(60) pivotably; and a chain guide (50) device rotatably and pivotably connected to the shifting element (40), the chain guide (50) including an upper chain guide pulley (51) and a lower chain tensioning pulley (52); wherein the rear derailleur is configured as a hierarchical modular construction system with at least two hierarchical levels; the rear derailleur including at least two modules from a set of modules including a base element module (20)(60) corresponding to the base element, a swivel formation module (30) corresponding to the swivel formation, a shifting element module (40) corresponding to the shifting element, and a chain guide module (50) corresponding to the chain guide; and at least one of the base element module (20)(60), swivel formation module, shifting element module, or chain guide module is configured to be interchangeable in one piece, and the least one of the modules (20)(60) includes at least one sub-assembly ((60) or (20)(Figs. 7, 16) that is configured as to be interchangeable in one piece [0172].
Regarding Claim 2, BRAEDT teaches wherein the sub-assembly (60) includes at least three interconnected individual parts (61)(66)((24a)(24b)(Fig. 7).
Regarding Claim 3, BRAEDT teaches wherein the modular construction system is configured for use of at least one family comprising at least two family members (60)(60’) of sub-assemblies within at least one of the modules (20)(60), wherein at least one sub-assembly family detachable connection interfaces of the family members to adjacent sub-assemblies (20) of the at least one module within the at least one sub-assembly family are configured uniformly across the family members such that a family member of the at least one sub-assembly family of the at least one module can be exchanged for another family member of the same sub-assembly family having any one, or a combination of, different materials, different design, different functionality, or different surface properties, while retaining the remaining sub-assemblies of the at least one module [0172].
Regarding Claim 4, BRAEDT teaches wherein the module (60) or the sub-assembly of the module, is configured to be replaceable without tools, or with conventional household tools [0172].
Regarding Claim 5, BRAEDT teaches wherein the sub-assembly of the base element module is a replaceable mounting arm (22a)(22b) (Fig. 7)(Fig. 16).
The arms have a different configuration in Figures 7 and 16 to accommodate different axles.
Regarding Claim 8, BRAEDT teaches wherein the sub-assembly (20) of the base element module (60)(20) is a replaceable cover element (22b) for protecting, at least in part, the base element module.
The outer arm protects the inner arm from impacts by objects heading towards the base member from the right side of the bicycle.
Regarding Claim 9, BRAEDT teaches wherein the swivel formation module has two swivel arms (35)(36) of the swivel parallelogram type for translationally swivel-connecting the base element module (20) and the shifting element module (40), and at least one of the two swivel arms (35)(36) includes a replaceable swivel arm sub-assembly (35)(36).
Each arm can be replaced.
Regarding Claim 10, BRAEDT teaches wherein the replaceable swivel arm sub-assembly is a cover element protecting at least portions of the swivel formation module.
The outer swivel arm protects the inner swivel arm from impacts by objects heading towards the swivel arm assembly from the right side of the bicycle.
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRAEDT (2019/0322333) in view of ANDO (5,957,792).
Regarding Claim 6, BRAEDT does not teach wherein the replaceable mounting arm is formed as a pressed or stamped part formed from a substantially planar blank.
ANDO teaches derailleur parts such as the base member (110) created through stamping (Col. 2 lines 59-67).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to change the arm in BRAEDT to be formed by stamping as in ANDO to create a cost effective and durable derailleur assembly.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRAEDT (2019/0322333) in view of WATARAI (2017/0113759).
Regarding Claim 7, BRAEDT does not teach wherein the replaceable mounting arm is formed substantially from a fiber composite.
WATARAI teaches wherein the replaceable mounting arm is formed substantially from a fiber composite [0069].
It would have been obvious to one of ordinary skill in the art at the time the application was filed to change the arm in BRAEDT to be formed with a fiber composite as in WATARAI to create a lightweight and durable derailleur.
Claim(s) 11, 12, 17, 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRAEDT (2019/0322333) in view of SALA (2021/0129938)
Regarding Claim 11, BRAEDT teaches wherein at least one swivel arm of the swivel formation module (35)(36) is pivotably connected to the base element module (60)(20) and to the shifting element module by means of two link pins (31)(33);
BRAEDT does not teach and the cover element forms a locking element for the two link pins so that the two link pins can be removed from the at least one swivel arm when the cover element is removed.
SALA teaches a cover element (28)(282) forms a locking element for the two link pins (513)(122) so that the two link pins can be removed from the at least one swivel arm when the cover element is removed.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to change the derailleur in BRAEDT so it is electrically powered and has the swivel arm subassembly options in SALA so the derailleur can be easily charged and have its battery easily replaced depending on other packaging preferences and constraints.
Regarding Claim 12, BRAEDT does not teach wherein at least one of the swivel arms comprises at least two swivel arm sub-assemblies, of which at least one swivel arm sub-assembly is configured as to be interchangeable.
SALA teaches wherein at least one of the swivel arms comprises at least two swivel arm sub-assemblies, of which at least one swivel arm sub-assembly (28)(282)(84)(85)(82)(842)(Figs. 24, 25) is configured as to be interchangeable.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to change the derailleur in BRAEDT so it is electrically powered and has the swivel arm subassembly options in SALA so the derailleur can be easily charged and have its battery easily replaced depending on other packaging preferences and constraints.
Regarding Claim 17, BRAEDT does not teach further comprising an electric module for electric operation of the rear derailleur, the electric module having at least one replaceable electric sub-assembly.
SALA teaches further comprising an electric module (28)(50)(54)(82) for electric operation of the rear derailleur, the electric module having at least one replaceable electric sub-assembly (82).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to change the derailleur in BRAEDT so it is electrically powered as in SALA so the derailleur is electrically powered to reduce effort required by the rider when changing gears.
Regarding Claim 18, BRAEDT as modified teaches wherein the at least one replaceable electric sub-assembly (SALA 82) is an electric motor-gearbox sub-assembly, or a battery unit, or both.
Claim(s) 13, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRAEDT (2019/0322333) in view of BROWN (2018/0274623).
Regarding Claim 13, BRAEDT does not teach wherein any one or a combination of the shifting element module and the chain guide module comprises a spring/damper sub-assembly for springing and/or damping a pivoting movement of the chain guiding device module relative to the shifting element module, and the spring/damper sub-assembly is configured as an integrally replaceable sub-assembly.
BROWN teaches wherein any one or a combination of the shifting element module and the chain guide module (93) comprises a spring/damper sub-assembly (90) for springing and/or damping a pivoting movement of the chain guiding device module relative to the shifting element module, and the spring/damper sub-assembly is configured as an integrally replaceable sub-assembly (Fig. 6).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to change the derailleur in BRAEDT so it has the damper in BROWN so the derailleur chain guide motion is damped to reduce the chance of the chain falling off the sprocket when the bicycle is ridden on bumpy terrain.
Regarding Claim 14, BRAEDT as modified teaches wherein the spring/damper sub-assembly and a receptive housing of the shifting element module are detachably connectable to one another by an at least two-threaded screw thread pairing (BROWN (202)(166)) arranged on the spring/damper sub-assembly and on the receptive housing, wherein the at least two-threaded screw threads of the screw thread pairing are arranged unevenly spaced from one another axially and/or in the circumferential direction relative to a pivot axis of the chain guide in such a way that the thread pairing is screwable into one another in only one rotational relative position (BROWN Fig. 6).
Claim(s) 15, 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRAEDT (2019/0322333) in view of LEITER (4,183,255).
Regarding Claim 15, BRAEDT does not teach wherein the chain guide module (50) comprises at least one replaceable chain guide sub-assembly.
LEITER teaches wherein the chain guide module (2) comprises at least one replaceable chain guide sub-assembly (22).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to change the derailleur in BRAEDT so it has the chain guide subassembly in LEITER so the derailleur chain guide could have its components easily removed and replaced when servicing is needed.
Regarding Claim 16, BRAEDT as modified teaches wherein the at least one replaceable chain guide sub-assembly (LEITER 22) is any one or a combination of a chain cage guide plate device, a chain guiding pulley, or a chain tensioning pulley.
Claim(s) 17, 18, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRAEDT (2019/0322333) in view of RODGERS (2020/0189688).
Regarding Claim 17, BRAEDT does not teach further comprising an electric module for electric operation of the rear derailleur, the electric module having at least one replaceable electric sub-assembly.
RODGERS teaches further comprising an electric module (1602) for electric operation of the rear derailleur, the electric module having at least one replaceable electric sub-assembly (1600).
It would have been obvious to one of ordinary skill in the art at the time the application was filed to change the derailleur in BRAEDT so it is electrically powered as in RODGERS so the derailleur is electrically powered to reduce effort required by the rider when changing gears.
Regarding Claim 18, BRAEDT as modified teaches wherein the at least one replaceable electric sub-assembly (RODGERS 1602) is an electric motor-gearbox sub-assembly, or a battery unit, or both.
Regarding Claim 19, BRAEDT teaches further comprising a motor-gearbox sub-assembly having a housing,
BRAEDT does not teach housing having a rotational axis connection and two translational stop connections (1606)(1612) for connecting to the base element, wherein the housing is connectable to the base element with respect to its six spatial degrees of freedom of movement.
RODGERS teaches the housing having a rotational axis connection (1606) and two translational stop connections (downward facing surface of 1604 contacting 1602)(1612) for connecting to the base element (1604), wherein the housing (1602F1)(1602F2) is connectable to the base element with respect to its six spatial degrees of freedom of movement.
It would have been obvious to one of ordinary skill in the art at the time the application was filed to change the derailleur in BRAEDT so it has the construction in RODGERS so the derailleur motor and transmission assembly is easily removed for servicing.
Allowable Subject Matter
Claim 20 is 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.
The prior art does not teach or suggest further comprising a motor-gearbox sub-assembly having a housing comprising at least two housing parts, an electric motor, and a support plate device for supporting the electric motor, wherein the support plate device is resiliently loadable by the sub-assembly of the at least two housing parts and can be positively fixed in the housing with respect to all six degrees of freedom of movement with all the other elements in Claim 20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HENRY Y LIU whose telephone number is (571)270-7018. The examiner can normally be reached 9-5:30 ET.
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HENRY Y. LIU
Examiner
Art Unit 3654
/HENRY Y LIU/Primary Examiner, Art Unit 3654