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 1,2, 5-11, 13-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8,11-17 and 19 of U.S. Patent No. 12,128,989. Although the claims at issue are not identical, they are not patentably distinct from each other because they both cover the same electronic bicycle control with only obvious variation in the claim drafting, dependency structure and minor added limitations that do not impart a patentable distinction.
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 1-3 and 5-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Daoura, et al. (US 20150356861).
Regarding claim 1, Daoura teaches an electronic control device for a bicycle, comprising: a housing (11, 16); a planar printed circuit board 20 disposed within the housing, the planar PCB having a substrate 20 and circuitry 19 attached to the substrate, the substrate having a thickness; and a power source 15 disposed within the housing, wherein a plane extending throughout the thickness of the substrate intersects the power source (Fig. 1).
Regarding claim 2, Daoura teaches the electronic control device wherein the power source 15 is disk shaped (Fig. 1).
Regarding claim 3, Daoura teaches the electronic control device wherein the power source is a coin-cell battery (Fig. 1).
Regarding claim 5, Daoura teaches the electronic control device wherein the planar PCB 20 has an interface end, the interface end including a recess 13b (Fig. 1).
Regarding claim 6, Daoura teaches the electronic control device wherein an edge of the substrate 20 at the recess 13b is formed as a curve (Fig. 1).
Regarding claim 7, Daoura teaches the electronic control device wherein the edge of the substrate 20 formed as a curve has tips and a centermost point defining a space therebetween (Fig. 1).
Regarding claim 8, Daoura teaches the electronic control device wherein the power source 15 is disposed within the space (Fig. 1).
Regarding claim 9, Daoura teaches the electronic control device wherein the power source has a length and a height (thickness of the battery), the length of the power source being substantially greater than the height of the power source (Fig. 1).
Regarding claim 10, Daoura teaches the electronic control device wherein the plane intersects the power source through an entirety of the length of the power source (Fig. 1).
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Howell-McLean (US20190185109).
Regarding claim 11, Howell-McLean taches an electronic control device for a bicycle, comprising: a housing 120; a planar printed circuit board (“PCB”) 206 disposed within the housing, the planar PCB having a substrate 208 and circuitry attached to the substrate (paragraph 78), the substrate having a thickness and a perimeter; a power source 214 disposed within the housing; and an antenna 232, wherein the antenna is disposed along the perimeter of the substrate (the antenna 232a is supported at the first position adjacent to a first edge 282 partially defining a perimeter of the second surface of the substrate, see Figs.19-21 and paragraphs 90,103-108).
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Daoura in view of Jensen, et al. (US20190170727).
Regarding claim 4, Daoura does not teach the type of the battery. However, Jensen teaches a similar electronic control device that have a coin-cell battery in a form of CR 2032 (paragraph 56). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings of Jensen in the device of Daoura to provide a more stable voltage.
Claims 11 and 13-16 are rejected under 35 U.S.C. 103 as being unpatentable over Daoura in view of Ying (US. Pat. 10,651,557).
Regarding claim 11, Daoura teaches an electronic control device for a bicycle, comprising: a housing (11, 16); a planar printed circuit board (“PCB”) 20 disposed within the housing, the planar PCB having a substrate 20 and circuitry 19 attached to the substrate, the substrate having a thickness and a perimeter; a power source 15 disposed within the housing; and an antenna 22 (Figs.1-2 and paragraphs 47). Datura does not teach the location of the antenna with respect to the substrate. However, Ying teaches an electronic device that comprises an antenna 120, and a substrate 110; wherein the antenna disposed along a perimeter of the substrate (Fig. 1),as required by claim 11; wherein the antenna has an antenna height, the antenna height is equal to the thickness of the substrate (col. 6,lines 35-45), as required by claim 13. It would have been obvious to one having ordinary skill in the art to rearrange the location of the antenna with respect to the housing and substrate, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Janise, 86 USPQ 70.
Regarding claim 14, Daoura teaches the electronic control device wherein the antenna is a trace antenna (paragraph 47).
Regarding claim 15, Daoura teaches the electronic control device wherein the planar PCB 20 includes a switch (14) disposed on a first side of the substrate and circuitry disposed on a second side of the substrate 20 (Fig. 1).
Regarding claim 16, Daoura teaches the electronic control device wherein the switch is a dome switch (Fig. 1).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Daoura and Ying as applied to claim 11, and further in view of Paun (US20040150562).
Regarding claim 12, Daoura does not teach the antenna is made of copper. However, Paun teaches an antenna that is made of from copper (paragraph 37). It would have been obvious to one having ordinary skill in the art to make the antenna from copper materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Daoura and Ying as applied to claim 11, and further in view of Huang (US 20120234659).
Daoura does not teach the housing including a button integrally formed with the housing and disposed above the switch, the switch being actuated by the button when a force is applied on the button. However, Huang teaches a similar electronic device that comprises a housing 31 including a button 33 integrally formed with the housing and disposed above a switch 35, the switch being actuated by the button when a force is applied on the button (annotated figure below), as required by claim 17; wherein the button includes a first rigid protrusion extending a first distance away from the switch and a second rigid protrusion extending a second distance towards the switch, the first distance being greater than the second distance (annotated figure below), as required by claim 18; wherein the second rigid protrusion includes a flat surface, the flat surface engaging the switch when the force is applied on the first rigid protrusion (annotated figure below), as required by claim 19; wherein the button and the housing are connected by a flexible hinge 331, and the button 33, the housing 31 and the flexible hinge are constructed from the same material and formed as a single unitary structure (annotated figure below), as required by claim 20.It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize the teachings of Huang in the electronic device of Daoura to facilitate the manufacturing and assembling process.
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Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AHMED M SAEED whose telephone number is (571)270-7976. The examiner can normally be reached 10-8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Luebke can be reached on 571-272-2009. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AHMED M SAEED/Primary Examiner, Art Unit 2833
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