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 19/075791. Claims 1-23 are currently pending in this application.
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 1-12, 20-23 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-32 of U.S. Patent No. 12,275,491. Although the claims at issue are not identical, they are not patentably distinct from each other because all the elements in the current set of claims 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) 1-4, 6, 10-14, 17, 18, 21-23 is/are rejected under 35 U.S.C. 102a1 as being anticipated by BRAEDT (2022/0411017)
Regarding Claim 1, BRAEDT teaches A bicycle motor unit comprising: an electric motor (Em) configured to generate a driving force; and a transmitting structure coupled to the electric motor to transmit the driving force from the electric motor to an actuated device of a bicycle, the transmitting structure including: a first rotatable member (SG2B) rotatable about a rotational axis; a second rotatable member (SG3A) rotatable relative to the first rotatable member about the rotational axis; and a resisting structure (CO) at least partially provided radially between the first rotatable member and the second rotatable member so as to resist relative rotation between the first rotatable member and the second rotatable member.
Regarding Claim 2, BRAEDT teaches wherein the first rotatable member (SG2B) is radially spaced apart from the second rotatable member (SG3A) with respect to the rotational axis.
Regarding Claim 3, BRAEDT teaches wherein the second rotatable member (SG3A) is at least partially provided radially inwardly of the first rotatable member (SG2B) with respect to the rotational axis.
Regarding Claim 4, BRAEDT teaches wherein the resisting structure (CO) includes a resisting member, and the resisting member is a separate member from at least one of the first rotatable member (SG2B) and the second rotatable member (SG3A).
Regarding Claim 6, BRAEDT teaches wherein the first rotatable member (SG2B) includes a first coupling portion (portion of SG2B contacting CO) coupled to the resisting structure (CO), and the second rotatable member (SG3A) includes a second coupling portion (portion of SG3A contacting CO) coupled to the resisting structure (CO).
Regarding Claim 10, BRAEDT teaches wherein the first rotatable member (SG2B) is operatively coupled to the electric motor (Em) to receive the driving force from the electric motor (Em), and the second rotatable member (SG3A) is configured to receive the driving force from the electric motor via the resisting structure (CO) and the first rotatable member (SG2B).
Regarding Claim 11, BRAEDT teaches wherein the first rotatable member (SG2B) includes a first gear, and the first gear is configured to mesh with a first additional gear (SW) to receive the driving force from the electric motor (Em) via the first additional gear.
Regarding Claim 12, BRAEDT teaches wherein the second rotatable member (SG3A) includes a second gear, and the second gear is configured to mesh with a second additional gear (SG3B) to transmit the driving force to the second additional gear (SG3B).
Regarding Claim 13, BRAEDT teaches wherein the first gear (SG2B) is provided radially outwardly of the second gear (SG3A).
Regarding Claim 14, BRAEDT teaches further comprising: a housing (SH1) (SH2) including an internal space, the transmitting structure being at least partially provided in the internal space; and an output shaft (SO) coupled to a link member of a bicycle derailleur, the link member (AD) being provided outside of the housing, the second additional gear (SG3B) being provided to the output shaft. The ordinary definition of “provided to” includes given or supplied to. SG3B engages and is supplied to the output shaft through SG4B.
Regarding Claim 17, BRAEDT teaches further comprising an additional transmitting structure (SW) having a structure different from a structure of the transmitting structure, the additional transmitting structure being configured to reduce transmission of force from the transmitting structure to the electric motor.
Regarding Claim 18, BRAEDT teaches further comprising an output shaft (SO) coupled to a link member (AD) of a bicycle derailleur, wherein the transmitting structure (SG2B)(SG3A)(CO) is provided on a downstream side of the additional transmitting structure (SW) on a power transmission path in a first power-transmission direction defined from the electric motor to the output shaft.
Regarding Claim 21, BRAEDT teaches further comprising a restricting member (CO) coupled to at least one of the first rotatable member (SG2B) and the second rotatable member (SG3A) to restrict a relative movement between the first rotatable member (SG2B) and the second rotatable member (SG3A) along the rotational axis.
Regarding Claim 22, BRAEDT teaches wherein the resisting structure (CO) allows relative rotation between the first rotatable member (SG2B) and the second rotatable member (SG3A) in response to input of a predetermined rotational force transmitted from at least one of the first rotatable member (SG2B) and the second rotatable member (SG3A).
Regarding Claim 23, BRAEDT teaches A bicycle derailleur comprising: a base member (KB); a chain guide (CG) movably coupled to the base member (KB); and the bicycle motor unit according to claim 1, the bicycle motor unit being provided to the base member to apply the driving force to the chain guide (CG).
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) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRAEDT (2022/0411017) in view of DUEWELING (2023/0248019).
Regarding Claim 5, BRAEDT does not teach wherein the resisting member includes a slidable member configured to slidably contact at least one of the first rotatable member and the second rotatable member.
DUEWELING teaches wherein the resisting member (118) includes a slidable member (120)(122) configured to slidably contact at least one of the first rotatable member (108) and the second rotatable member (104).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the clutch configuration in BRAEDT to the one in DUEWELING so the overload clutch is durable and cost effective.
Claim(s) 15, 16, 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over BRAEDT (2022/0411017) in view of SALA (2023/0094161)
Regarding Claim 15, BRAEDT does not teach further comprising: a detection object provided to the second rotatable member to rotate along with the second rotatable member about the rotational axis; and a detector configured to detect the rotational position of the detection object.
SALA teaches further comprising: a detection object (57) provided to the second rotatable member (511) to rotate along with the second rotatable member about the rotational axis; and a detector (58) configured to detect the rotational position of the detection object (57).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the sensor configuration in BRAEDT to be on the shaft in SALA to create a more compact and cost effective derailleur.
Regarding Claim 16, BRAEDT as modified teaches wherein the second rotatable member (SALA 511) includes a first axial end and a second axial end, the second rotatable member extends between the first axial end and the second axial end along the rotational axis, and the detection object (SALA 57) is provided to the first axial end.
Regarding Claim 19, BRAEDT teaches further comprising: a detector (FM) configured to detect the rotational position of the detection object (CM), wherein the detection object is provided on a downstream side with respect to the additional transmitting structure (SW) on the power transmission path, and the detection object is provided on a downstream side with respect to the transmitting structure (SG2B)(SG3A)(CO) on the power transmission path.
BRAEDT does not teach a detection object provided to the second rotatable member to rotate along with the second rotatable member about the rotational axis;
SALA teaches a detection object (57) provided to the second rotatable member (511) to rotate along with the second rotatable member (511) about the rotational axis; a detector (58) configured to detect the rotational position of the detection object (57),
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to change the sensor configuration in BRAEDT to be on the shaft in SALA to create a more compact and cost effective derailleur.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT W HODGE can be reached at 5712722097. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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HENRY Y. LIU
Examiner
Art Unit 3654
/HENRY Y LIU/Primary Examiner, Art Unit 3654