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 12 and 13 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claim 1 of U.S. Patent No. 12,227,258 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because each one of the limitations recited in Claims 12 and 13 of the instant application corresponds directly to a respective element of Claim 1 of U.S. Patent No. 12,227,258 B2.
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 14, 15, 16, 17, and 18 are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 2, 5, 10, 11, and 4, respectively, of prior U.S. Patent No. 12,227,258 B2. This is a statutory double patenting rejection.
Specification
The abstract of the disclosure is objected to because of wording in Line 1. Replacing “A foldable personal such as a tricycle” with “A foldable personal vehicle such as a tricycle” is suggested. (Emphasis added.) A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Objections
Claim 12 is objected to because of the following informality: punctuation in Lines 7-8. Replacing “a front bar having a front bar axis, an upper portion associated with handlebars and a lower portion associated with said front wheel” with “a front bar having a front bar axis, an upper portion associated with handlebars, and a lower portion associated with said front wheel” is suggested. (Emphasis added.) Appropriate correction is required.
Claim 15 is objected to because of the following informality: wording in Lines 1-2. Replacing “the upper and lower portions of the front bar” with “the upper portion of the front bar and the lower portion of the front bar” is suggested. Appropriate correction is required.
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12-17 and 20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Huang (US 7124849 B2). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 12, Huang teaches a personal vehicle configured for accommodating a child therein and having an operational state and a storage state [Huang Figs. 7 and 10; Huang paragraph 9: “The primary objective of the present invention is to provide a tricycle that is foldable without separating parts from the tricycle.”], the personal vehicle comprising: a front wheel and at least one rear wheel [Huang Fig. 1, Reference Characters 11 and 12]; a body member having front and rear portions including corresponding front and rear ends spaced from each other along a longitudinal axis, the rear portion being associated with the at least one rear wheel; the body member having an upper surface [Huang Fig. 1, Reference Character 1]; a front bar having a front bar axis, an upper portion associated with handlebars and a lower portion associated with said front wheel [Huang Fig. 1, Reference Character 2]; the front bar being manipulable between an operational state and a storage state, in which at least the upper portion of the front bar extends along the upper surface of the body member [Huang Figs. 7 and 10, Reference Character 2]; and a seat mounted to the upper surface of the body member so as to be supported at least partially by the rear portion of the body member [Fig. 1, Reference Character 3]; and a backrest having a foldable backrest portion pivotable between an upright orientation in the operational state of the vehicle and a transverse orientation in the storage state of the vehicle, in which the foldable backrest portion at least partially covers the handlebars of the front bar upper portion [Huang Figs. 1 and 7-10, Reference Character 5].
Regarding Claim 13, Huang teaches the personal vehicle according to claim 12, wherein the backrest comprises a stationary backrest portion having a pivot axis about which the foldable backrest portion is pivotable [Huang Figs. 1 and 7-10, wherein the stationary backrest portion is represented by the unnumbered vertical member pivotally connected to the base of the Reference Character 5 (foldable backrest) at a pivot point located below Reference Character 52].
Regarding Claim 14, Huang teaches the personal vehicle according to claim 12, wherein the foldable backrest portion is pivotable about an axis spaced from the seat by the stationary backrest portion [Huang Figs. 1 and 7-10, wherein the axis is located at the base of Reference Character 5 (foldable backrest) at a pivot point located below Reference Character 52)].
Regarding Claim 15, Huang teaches the personal vehicle according to claim 12, wherein the upper and lower portions of the front bar are configured to be locked to each other to behave as a single integral unit and unlocked from each other allowing the lower portion to be manipulated independently of the upper portion [Huang Figs. 1, 2, 7, and 9, Reference Characters 2 (front bar, upper portion), 15 (front bar, lower portion), and 21/221/151 (locking means); Huang Paragraph 13: “the handlebar stand 2 has a tip formed with a first circular notched surface 21. A front wheel bracket 15 securely connected to the body 1 and having the front wheel 11 rotatably mounted therein is securely connected to the handlebar stand 2 and has a second circular notched surface 151 corresponding to and mated with the first circular notched surface 21…the first circular notched surface 21 is able to freely rotate relative to the second circular notched surface 151, which means that the handlebar stand 2 is able to pivot relative to the body 1.”].
Regarding Claim 16, Huang teaches the personal vehicle according to claim 12, wherein in the storage state of the vehicle, the foldable backrest portion covers the handlebars at least along a majority of their total length [Huang Figs. 1, 7, and 10].
Regarding Claim 17, Huang teaches the personal vehicle according to claim 12, wherein in the storage state of the vehicle, the front bar extends along the upper surface of the body member along at least a majority of the length of the front bar [Huang Fig. 10, Reference Characters 2 (front bar) and 1 (body member)].
Regarding Claim 20, Huang teaches the personal vehicle according to claim 12, wherein a length of the backrest is substantially longer than a length of the seat [Huang Fig. 7].
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 (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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (US 7124849 B2) in view of Baron (US 20180072338 A1). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 18, Huang teaches a personal vehicle but does not teach a securing frame. Baron teaches the personal vehicle according to claim 12, further comprising a securing frame capable of being brought between an operational orientation in the operational state of the vehicle, in which the securing frame can prevent a child seated in the seat from falling off, and a non-operational orientation in which the securing frame is aligned with the foldable backrest portion at least in the storage state of the vehicle [Baron Figs. 1 and 10, Reference Characters 122 and 141]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the personal vehicle of Huang to include, with a reasonable expectation of success, a securing frame aligned with the foldable backrest portion in view of Baron. A person having ordinary skill in the art would have been motivated to combine Huang and Baron because this would have achieved the desirable result of enabling the vehicle to be folded into a small package, as recognized by Baron [Baron Paragraph 0010: “It is another object of the present invention to provide a foldable tricycle that can be folded into a small package.”].
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Huang (US 7124849 B2) in view of Michelau et al. (US 6840527 B1) (hereinafter “Michelau”). [Note that prior art citations below are italicized and enclosed in brackets.]
Regarding Claim 18, Huang teaches a personal vehicle but does not teach a rear port within the body member. Michelau teaches the personal vehicle according to claim 12, further comprising a rear port disposed within the body member rear portion and configured to be revolved by a steering handle [Michelau Figs. 1-3, Reference Characters 48 and 42; Michelau “Description of the Preferred Embodiments” Paragraph 3: “As also illustrated in FIGS. 1 and 2, a push handle tube 42 is positioned through the main frame member 12 and pivotally mounted therein by upper push handle tube bearing 44 and lower push handle tube bearing 46.”]. It would have been obvious for a person having ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the personal vehicle of Huang to include, with a reasonable expectation of success, a rear port disposed within the body member in view of Michelau. A person having ordinary skill in the art would have been motivated to combine Huang and Michelau because this would have achieved the desirable result of protecting the auxiliary steering mechanism from damage, as recognized by Michelau [Michelau “Background/Summary” Paragraph 10: “it is an object of the present invention to provide an auxiliary steering mechanism for a tricycle that may be contained within a frame tube of a tricycle so as to be protected from damage.”]
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL T WALSH whose telephone number is 303-297-4351. The examiner can normally be reached Monday-Friday 9:00 am - 5:30 pm ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, J. Allen Shriver II, can be reached at 303-297-4337. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL T. WALSH/Examiner, Art Unit 3613
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