DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “interior of each of the plurality of nipple access holes is threaded” as set forth in claim 6 and “the exterior of each nipple…comprises threading that corresponds with the interior threading on the interior of each of the plurality of nipple access holes” as set forth in claim 7 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
Page 2 of the specification should be updated to include the number of the U.S. Patent granted from U.S. Patent Application Serial No. 16/947,225.
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: The specification should describe the subject matter of claim 5.
Appropriate correction is required.
Claim Objections
Claim 5 is objected to because of the following informalities: Each occurrence of the term “then” should be replaced with the term -- than -- for grammatical clarity. Appropriate correction is required.
Claim Rejections - 35 USC § 112
4. The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 6 and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 6, there is no support in the original disclosure for “the interior of each of the plurality of nipple access holes is threaded”.
Regarding claim 7, there is no support in the original disclosure for “the exterior of each nipple on the plurality of flexible spoke assemblies further comprises threading that corresponds with the interior threading on the interior of each of the plurality of nipple access holes”.
Claim Rejections - 35 USC § 102
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 (i.e., changing from AIA to pre-AIA ) 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 the appropriate paragraphs of pre-AIA 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) the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for a patent.
(e) the invention was described in (1) an application for patent, published under section 122(b), by another filed in the United States before the invention by the applicant for patent or (2) a patent granted on an application for patent by another filed in the United States before the invention by the applicant for patent, except that an international application filed under the treaty defined in section 351(a) shall have the effects for purposes of this subsection of an application filed in the United States only if the international application designated the United States and was published under Article 21(2) of such treaty in the English language.
9. Claims 1-5 are rejected under pre-AIA 35 U.S.C. 102(a) and 102(e) as being anticipated by Huang (US 2011/02415636 A1).
Regarding claim 1, Huang discloses a wheel comprising: a plurality of flexible spoke assemblies 30, each having an anchor 32 on a proximal end of the plurality of flexible spoke assemblies and a nipple 34 on the distal end of the plurality of flexible spoke assemblies (Figs. 1 and 4); a hub 20 that is configured to have a plurality of flange holes 21 to secure the anchor of the plurality of the flexible spoke assemblies (Fig. 4; paragraphs [0022-0024]); and a rim 10 that is configured to have a plurality of nipple access holes 11 to secure the nipple of the plurality of the flexible spoke assemblies (Fig. 4; paragraphs [0020] and [0023]).
Regarding claim 2, Huang further discloses each of the plurality of flexible spoke assemblies is capable of bending without a decrease in strength (evident from the spoke construction described in at least paragraph [0026]).
Regarding claim 3, Huang further discloses each of the plurality of flexible spoke assemblies further comprises a tube 33.
Regarding claim 4, Huang further discloses each of the plurality of flexible spoke assemblies further comprise a plurality of non-rigid fiber (paragraph [0026]).
Regarding claim 5, Huang further discloses each of the plurality of flange holes have a diameter that is wider than a width of the plurality of flexible spoke assemblies (Fig. 4) but is narrower than the anchor on each of the plurality of flexible spoke assemblies (Fig. 4; paragraph [0024]).
Double Patenting
10. 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
11. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 9,682,596 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claims 1 and 10 of U.S. Patent No. 9,682,596 B2. In other words, claims 1 and 10 of U.S. Patent No. 9,682,596 B2 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1.
12. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of U.S. Patent No. 10,201,999 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claims 1 and 10 of U.S. Patent No. 10,201,999 B2. In other words, claims 1 and 10 of U.S. Patent No. 10,201,999 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1.
13. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of U.S. Patent No. 10,696,093 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claims 1 and 6 of U.S. Patent No. 10,696,093 B2. In other words, claims 1 and 6 of U.S. Patent No. 10,696,093 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1.
14. Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 8,985,708 B2.
Although the claims at issue are not identical, they are not patentably distinct from each other because claim 1 is generic to all that is recited in claim 1 of U.S. Patent No. 8,985,708 B2. In other words, claim 1 of U.S. Patent No. 8,985,708 fully encompasses the subject matter of claim 1 and therefore anticipates claim 1.
Conclusion
15. Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIP T KOTTER whose telephone number is (571)272-7953. The examiner can normally be reached 9:30-6 EST Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Samuel (Joe) J Morano can be reached at (571)272-6684. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kip T Kotter/Primary Examiner, Art Unit 3615
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