DETAILED ACTION
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,291,297 and claims 1-26 of U.S. Patent No. 12,269,547. Although the claims at issue are not identical, they are not patentably distinct from each other because the structural limitations of the adjustable seat post of a bicycle is claimed in the issued patent as in the claimed invention.
Claim Objections
Claim 3 is objected to because of the following informalities: Claimed subject matter, “at least one opening substantially orthogonal to the central opening” is not disclosed in the specification or shown in the drawings. Appropriate correction is required. It is unclear what the opening is.
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, 14-16, and 18-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by David Watson U.S. Patent Publication 2021/003185 A1 (Watson).
Regarding claim 1, Watson discloses a height adjustable seat post for a bicycle, the height adjustable seat post comprising: an upper tube and a lower tube (Figure 4 Element 12 20) configured in a telescopic arrangement ([0105]), the lower tube to be coupled to a frame of the bicycle, the upper tube to be coupled to a seat; and an end cap, the end cap comprising: a body disposed partially in the lower tube and extending outward from a lower end of the lower tube; and a cover threaded onto the body ([0106]).
Regarding claim 2, Watson discloses the height adjustable seat post wherein the body comprises a central opening between lower tube and the cover (Figure 7 Element 25, 29 has a central opening).
Regarding claim 3, Watson discloses the height adjustable seat post wherein the body comprises at least one opening substantially orthogonal to the central opening (threaded sides along the body are positioned orthogonal).
Regarding claim 4, Watson discloses the height adjustable seat post wherein the body wherein the body is non-rotatably secured to the lower end of the lower tube such that the cover is threadably rotatable relative to the body and the lower tube (Figure 7, [0105-0106]).
Regarding claim 5, Watson discloses the height adjustable seat post further comprising a shaft extending through the lower tube, wherein the shaft is coupled to the end cap (Element 71).
Regarding claim 14, Watson discloses the height adjustable seat post wherein the cover abuts the lower tube in an assembled state (Figure 7).
Regarding claim 15, Watson discloses a height adjustable seat post for a bicycle, the height adjustable seat post comprising: an upper tube and a lower tube configured in a telescopic arrangement, the lower tube to be coupled to a frame of the bicycle, the upper tube to be coupled to a seat; and an end cap, the end cap comprising: a body disposed partially in the lower tube and extending outward from a lower end of the lower tube; and a cover abutting the lower end of the lower tube in an assembled state (Figure 1-7 [0105-0106]).
Regarding claim 16 and 18, Watson discloses the height adjustable seat post wherein the cover is threaded onto the body (Figure 7 [0106]); wherein the cover has a reduced diameter relative to lower end of the lower tube (Figure 7).
Regarding claim 19, Watson discloses a height adjustable seat post for a bicycle, the height adjustable seat post comprising: an upper tube and a lower tube configured in a telescopic arrangement, the lower tube to be coupled to a frame of the bicycle, the upper tube to be coupled to a seat; at least one seal between the upper tube and the lower tube; an end cap comprising: a body disposed partially in the lower tube and extending outward from a lower end of the lower tube; and a cover abutting the lower end of the lower tube in an assembled state; and a pressure control chamber defined between the at least one seal and the end cap, the pressure control chamber vented to atmosphere (Figure 1-7 [0105-0106], 0135]); wherein the cover is threaded onto the body.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHIN H KIM whose telephone number is (571)272-7788. The examiner can normally be reached Monday-Friday 9AM-6PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, David Dunn can be reached at 571-272-6670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHIN H KIM/Primary Examiner, Art Unit 3636
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