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 1-8, 17, 19, 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7, 15-17 of U.S. Patent No. 12312042. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in the Application are generic to all that is recited in the claims of the Patent. That is the claims would fall entirely within the scope of the claims in the patent. The claims correspond as follows (using the format of claim of the Application corresponds to claim of the Patent): Claims 1, 2 correspond to claim 1. Claim 3 corresponds to claim 2. Claim 4 corresponds to claim 3. Claim 5 corresponds to claim 4. Claim 6 corresponds to claim 5. Claim 7 corresponds to claim 6. Claim 8 corresponds to claim 7. Claim 17 corresponds to claim 15. Claim 19 corresponds to claim 16. Claim 20 corresponds to claim 17.
Claims 9-16, 17, 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-14 of U.S. Patent No. 12312042 in view of Hickernell 11433969.
The following correspondence exists between the Application and Patent ‘042. Claims 9, 10, 17 correspond to claim 8; Claim 11 corresponds to claim 9, claim 12 corresponds to claim 10, claim 13 corresponds to claim 11, claim 14 corresponds to claim 12, claim 15 corresponds to claim 13, and claim 16 corresponds to claim 14. Claim 9 and claim 18 differ simply in that the axes of the primary or spherical bearing need to be perpendicular. This concept is very well known in the prior art for these types of pedals and is specifically taught in Hickernell in that a spherical type bearing allows for the perpendicular relationship of axes (note Hickernell specifically discloses the claimed arrangement of the bearings as is detailed in prior art rejections below). Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the claims 9 and 18 in the Application to make use of perpendicular axes as taught by Hickernell in order to achieve the same predictable result of allowing the pedal to pivot about different planes and thus give the user more comfort during riding.
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.
(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.
Claim(s) 1, 2, 5-10, 13-17 is/are rejected under 35 U.S.C. 102a1 or a2 as being anticipated by Hickernell (USP 11433969). (it is important to note; Hickernell explicitly discloses in writing an alternative embodiment than what is shown in the figures; one having ordinary skill in the art would have no difficulty understanding how this would be envisioned. While references are being made below with reference to these figures, the rejection must be thought of as referring to the disclosed embodiment which is an opposite arrangement of the bearings shown in fig.2)
Independent claims -
Regarding claim 1, Hickernell discloses a pedal comprising:
a pedal body member (fig.2, 10) having a shaft cavity (cavity through 14 and 16 seen in fig.2);
an axle (23) including a threaded end (threaded end 21) and a shaft (shaft part at 23), the shaft having a longitudinal axis (axis along the axle), and the shaft extending into the shaft cavity in a first direction away from a pedal crank side of the pedal body member (evident in figures); and
a bearing (40) secured to the pedal body member adjacent the pedal crank side of the pedal body member (while not explicitly shown in the figures, the specification clearly describes from col.4, lines 66+ to col.5, lines 1-4: “In accordance with a seventh alternate embodiment of the pedal 70, a horizontal rotational axis 50 configured with a spherical rolling joint 40 mounted on the first end of the axle shaft 23 and a roller bearing 30 retained to the second end of the axle shaft 23, can accommodate a cyclist's anatomical preference for an XY-axis located on the first end of the axle shaft 23.” This specifically talks about an alternative embodiment wherein you would have bearing 40 on the first end which is the side with the crank axle and bearing 30 on the second end which is the side with threads 26. For a frame of reference, the first end/second end of the pedal axle are clearly defined in col.3, lines 24-28.), the axle shaft being rotatably mounted to the bearing, the bearing having a central pivot axis (as evident in fig.3, bearing 40 would have two axes, one allowing it to pivot about the pedal axle and a central one allowing it to pivot about x1, x2 in fig.3), the pedal body member being rotatable around the central pivot axis, the central pivot axis being different than the longitudinal axis of the axle shaft (clearly visible from fig.3 the axes would be different).
Regarding claim 9, Hickernell discloses a pedal comprising:
a pedal body member (fig.2, 10) having a shaft cavity (cavity through 14 and 16 seen in fig.2);
an axle (23) including a threaded end (threaded end 21) and a shaft (shaft part at 23), the shaft having a longitudinal axis (axis along the axle), and the shaft extending into the shaft cavity in a first direction away from a pedal crank side of the pedal body member (evident in figures); and
a bearing (40) secured to the pedal body member adjacent the pedal crank side of the pedal body member (while not explicitly shown in the figures, the specification clearly describes from col.4, lines 66+ to col.5, lines 1-4: “In accordance with a seventh alternate embodiment of the pedal 70, a horizontal rotational axis 50 configured with a spherical rolling joint 40 mounted on the first end of the axle shaft 23 and a roller bearing 30 retained to the second end of the axle shaft 23, can accommodate a cyclist's anatomical preference for an XY-axis located on the first end of the axle shaft 23.” This specifically talks about an alternative embodiment wherein you would have bearing 40 on the first end which is the side with the crank axle and bearing 30 on the second end which is the side with threads 26. For a frame of reference, the first end/second end of the pedal axle are clearly defined in col.3, lines 24-28.), the axle shaft being rotatably mounted to the bearing, the bearing having a central pivot axis (as evident in fig.3, bearing 40 would have two axes, one allowing it to pivot about the pedal axle and a central one allowing it to pivot about x1, x2 in fig.3), the pedal body member being rotatable around the central pivot axis, the central pivot axis being perpendicular the longitudinal axis of the axle shaft (clearly visible from fig.3 the axes would be perpendicular and that is because bearing 30 would be restricted to pivot along a slot).
Regarding claim 17, Hickernell discloses a pedal comprising:
a pedal body member (10) having a shaft cavity (seen in fig.2);
a bearing (40) seated in an annular recess (annular recess that would be in part 16) in the pedal body member adjacent to a pedal crank side of the pedal body member (while not explicitly shown in the figures, the specification clearly describes from col.4, lines 66+ to col.5, lines 1-4: “In accordance with a seventh alternate embodiment of the pedal 70, a horizontal rotational axis 50 configured with a spherical rolling joint 40 mounted on the first end of the axle shaft 23 and a roller bearing 30 retained to the second end of the axle shaft 23, can accommodate a cyclist's anatomical preference for an XY-axis located on the first end of the axle shaft 23.” This specifically talks about an alternative embodiment wherein you would have bearing 40 on the first end which is the side with the crank axle and bearing 30 on the second end which is the side with threads 26. For a frame of reference, the first end/second end of the pedal axle are clearly defined in col.3, lines 24-28.), the bearing being rotatable around a first axis and a second axis, the first axis being different than the second axis (as evident in fig.3, bearing 40 would have two axes, one allowing it to pivot about the pedal axle and a central one allowing it to pivot about x1, x2 in fig.3; the axes would clearly be different) and
an axle (23) including a threaded end (crank side threads at 21) and a shaft (23), the shaft extending into the shaft cavity (evident from figures), the shaft mounted to the bearing and having a longitudinal axis coaxial with the second axis of the bearing (evident from figures), the pedal body member being rotatable in a first direction around the longitudinal axis of the axle shaft and in a second direction around the first axis of the bearing (evident from fig.3, the rotation capability is possible; it is important to keep in mind that the pedal would function the same in the reverse or alternative arrangement disclosed).
Dependent claims-
Regarding claims 2 and 10, Hickernell discloses at least one distal bearing (30) rotatably mounted to the axle shaft at a location spaced apart from the pedal crank side of the pedal body member (based on the embodiment discussed at the end of col.4 into col.5; this bearing would be located at end 26).
Regarding claims 5, and 13, Hickernell discloses a spherical bearing mount (42 reads on the spherical bearing mount) secured to the pedal body member, and the bearing is mounted within the spherical bearing mount (the bearings 62, 63 providing bearing functionality and mounted therein).
Regarding claims 6 and 14, Hickernell discloses the spherical bearing mount is at least partially mounted within a machined pocket in the pedal body member (would be mounted in the pocket visible in figures; the machined aspect is treated as product by process it doesn’t impart any differing structure).
Regarding claims 7 and 15, Hickernell discloses wherein the spherical bearing mount is disposed for pivotal movement around the central pivot axis to allow the axle shaft to move laterally within the shaft cavity (evident from figures).
Regarding claims 8 and 16, Hickernell discloses wherein the bearing is a self-aligning bearing (the bearing is capable of self-aligning and thus reads on it) seated in an annular recess (seen in figures) in the pedal body member.
Regarding claim 17, Hickernell discloses wherein the first axis of the bearing is perpendicular to the second axis of the bearing (this is described in the rejection of claim 9; the axes would be perpendicular).
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (TW 105206570 U) in view of Hickernell (USP 11433969).
Independent claims -
Regarding claim 1, Li discloses a pedal comprising:
a pedal body member (fig.5, 10) having a shaft cavity (cavity seen in fig.5 for pedal axle);
an axle (20) including a threaded end (threaded end 21) and a shaft (shaft part seen in fig.5), the shaft having a longitudinal axis (axis along the axle), and the shaft extending into the shaft cavity in a first direction away from a pedal crank side of the pedal body member (evident in figures); and
a bearing (40) secured to the pedal body member (seen in fig.5), the axle shaft being rotatably mounted to the bearing (seen in fig.5), the bearing having a central pivot axis (evident in fig.5; bearing 40 would have a central pivot axis which is perpendicular into the page), the pedal body member being rotatable around the central pivot axis, the central pivot axis being different than the longitudinal axis of the axle shaft (clearly visible from fig.5 the axes would be different).
Li fails to explicitly disclose the reverse arrangement of the bearings or an alternate arrangement where the spherical bearing is mounted to the first end or crank end, specifically a bearing secured to the pedal body member adjacent the pedal crank side of the pedal body member.
Hickernell teaches and/or suggests the concept/technique of changing a pedal structure, such that a spherical bearing is mounted to a pedal crank side of a pedal body along with the other bearing being mounted to the opposite side. In other words, Hickernell teaches reversing the arrangement of the bearings and pedal structure accordingly (while not explicitly shown in the figures, the specification clearly describes from col.4, lines 66+ to col.5, lines 1-4: “In accordance with a seventh alternate embodiment of the pedal 70, a horizontal rotational axis 50 configured with a spherical rolling joint 40 mounted on the first end of the axle shaft 23 and a roller bearing 30 retained to the second end of the axle shaft 23, can accommodate a cyclist's anatomical preference for an XY-axis located on the first end of the axle shaft 23.” This specifically talks about an alternative embodiment wherein you would have bearing 40 on the first end which is the side with the crank axle and bearing 30 on the second end which is the side with threads 26. For a frame of reference, the first end/second end of the pedal axle are clearly defined in col.3, lines 24-28.)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pedal body and bearings in Li, in accordance with the teaching/suggestion as provided by Hickernell in order to provide the same predictable result of allowing the pedal body to rotate about two different axes, simply put the pivot point for the multi-pivot or XY axes would simply be in the opposite location. Or rather as noted by Hickernell this would accommodate the cyclist anatomical preference for where the axis that allows the XY or multi pivot to be. It is further understood that it would be well within the level and creativity of one having ordinary skill in the art to modify the pedal assembly in Li according to this concept and thus rearrange the disclosed structure accordingly.
Regarding claim 9, Li discloses a pedal comprising:
a pedal body member (fig.5, 10) having a shaft cavity (cavity seen in fig.5 for pedal axle);
an axle (20) including a threaded end (threaded end 21) and a shaft (shaft part seen in fig.5), the shaft having a longitudinal axis (axis along the axle), and the shaft extending into the shaft cavity in a first direction away from a pedal crank side of the pedal body member (evident in figures); and
a bearing (40) secured to the pedal body member (seen in fig.5), the axle shaft being rotatably mounted to the bearing (seen in fig.5), the bearing having a central pivot axis (evident in fig.5; bearing 40 would have a central pivot axis which is perpendicular into the page), the pedal body member being rotatable around the central pivot axis, the central pivot axis being perpendicular the longitudinal axis of the axle shaft (clearly visible from fig.5 the axes would be perpendicular).
Li fails to explicitly disclose the reverse arrangement of the bearings or an alternate arrangement where the spherical bearing is mounted to the first end or crank end, specifically a bearing secured to the pedal body member adjacent the pedal crank side of the pedal body member.
Hickernell teaches and/or suggests the concept/technique of changing a pedal structure, such that a spherical bearing is mounted to a pedal crank side of a pedal body along with the other bearing being mounted to the opposite side. In other words, Hickernell teaches reversing the arrangement of the bearings and pedal structure accordingly (while not explicitly shown in the figures, the specification clearly describes from col.4, lines 66+ to col.5, lines 1-4: “In accordance with a seventh alternate embodiment of the pedal 70, a horizontal rotational axis 50 configured with a spherical rolling joint 40 mounted on the first end of the axle shaft 23 and a roller bearing 30 retained to the second end of the axle shaft 23, can accommodate a cyclist's anatomical preference for an XY-axis located on the first end of the axle shaft 23.” This specifically talks about an alternative embodiment wherein you would have bearing 40 on the first end which is the side with the crank axle and bearing 30 on the second end which is the side with threads 26. For a frame of reference, the first end/second end of the pedal axle are clearly defined in col.3, lines 24-28.)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pedal body and bearings in Li, in accordance with the teaching/suggestion as provided by Hickernell in order to provide the same predictable result of allowing the pedal body to rotate about two different axes, simply put the pivot point for the multi-pivot or XY axes would simply be in the opposite location. Or rather as noted by Hickernell this would accommodate the cyclist anatomical preference for where the axis that allows the XY or multi pivot to be. It is further understood that it would be well within the level and creativity of one having ordinary skill in the art to modify the pedal assembly in Li according to this concept and thus rearrange the disclosed structure accordingly.
Regarding claim 17, Li discloses a pedal comprising:
a pedal body member (10) having a shaft cavity (seen in fig.5);
a bearing (40) seated in an annular recess (annular recess seen in fig.5) in the pedal body member, the bearing being rotatable around a first axis and a second axis, the first axis being different than the second axis (as evident in fig.5, bearing 40 would have two axes) and
an axle (20) including a threaded end (crank side threads at 21) and a shaft (seen in fig.5), the shaft extending into the shaft cavity (evident from figures), the shaft mounted to the bearing and having a longitudinal axis coaxial with the second axis of the bearing (evident from figures), the pedal body member being rotatable in a first direction around the longitudinal axis of the axle shaft and in a second direction around the first axis of the bearing (evident from fig.5, the rotation capability is possible).
Li fails to explicitly disclose the reverse arrangement of the bearings or an alternate arrangement where the spherical bearing is mounted to the first end or crank end, specifically a bearing secured to the pedal body member adjacent the pedal crank side of the pedal body member.
Hickernell teaches and/or suggests the concept/technique of changing a pedal structure, such that a spherical bearing is mounted to a pedal crank side of a pedal body along with the other bearing being mounted to the opposite side. In other words, Hickernell teaches reversing the arrangement of the bearings and pedal structure accordingly (while not explicitly shown in the figures, the specification clearly describes from col.4, lines 66+ to col.5, lines 1-4: “In accordance with a seventh alternate embodiment of the pedal 70, a horizontal rotational axis 50 configured with a spherical rolling joint 40 mounted on the first end of the axle shaft 23 and a roller bearing 30 retained to the second end of the axle shaft 23, can accommodate a cyclist's anatomical preference for an XY-axis located on the first end of the axle shaft 23.” This specifically talks about an alternative embodiment wherein you would have bearing 40 on the first end which is the side with the crank axle and bearing 30 on the second end which is the side with threads 26. For a frame of reference, the first end/second end of the pedal axle are clearly defined in col.3, lines 24-28.)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the pedal body and bearings in Li, in accordance with the teaching/suggestion as provided by Hickernell in order to provide the same predictable result of allowing the pedal body to rotate about two different axes, simply put the pivot point for the multi-pivot or XY axes would simply be in the opposite location. Or rather as noted by Hickernell this would accommodate the cyclist anatomical preference for where the axis that allows the XY or multi pivot to be. It is further understood that it would be well within the level and creativity of one having ordinary skill in the art to modify the pedal assembly in Li according to this concept and thus rearrange the disclosed structure accordingly.
Dependent claims-
Regarding claims 2 and 10, the combination discloses at least one distal bearing (fig.5 in Li, bearing 31, etc would be the bearing) rotatably mounted to the axle shaft at a location spaced apart from the pedal crank side of the pedal body member (based on the combination, this bearing would not be located at the opposite or far end of the pedal body member).
Regarding claims 3, 11 and 18, Li discloses a forward spring (either spring 34 depending on frame of reference for forward/rear) supported by the pedal body member and positioned to impart a force to move the axle shaft toward a rear side of the pedal body member; and a rear spring (either spring 34 depending on frame of reference for forward/rear) supported by the pedal body member and positioned to impart a force to move the axle shaft toward a forward side of the pedal body member.
Regarding claim 4, 12, and 19, Li discloses a forward sleeve (seen in annotated fig.5) enclosing a portion of the forward spring, and a rear sleeve (seen in annotated fig.5) enclosing a portion of the rear spring.
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Regarding claims 5, and 13, Li discloses a spherical bearing mount (41 reads on the spherical bearing mount) secured to the pedal body member, and the bearing is mounted within the spherical bearing mount (seen in figures; analogous to Applicants arrangement).
Regarding claims 6 and 14, Li discloses the spherical bearing mount is at least partially mounted within a machined pocket in the pedal body member (would be mounted in the pocket visible in figures; the machined aspect is treated as product by process it doesn’t impart any differing structure).
Regarding claims 7 and 15, Li discloses wherein the spherical bearing mount is disposed for pivotal movement around the central pivot axis to allow the axle shaft to move laterally within the shaft cavity (evident from figures).
Regarding claims 8 and 16, Li discloses wherein the bearing is a self-aligning bearing (the bearing is capable of self-aligning and thus reads on it) seated in an annular recess (seen in figures) in the pedal body member.
Regarding claim 17, Li discloses wherein the first axis of the bearing is perpendicular to the second axis of the bearing (this is described in the rejection of claim 9; the axes would be perpendicular).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. It is noted that the claims are broad enough that even a Foldable pedal such as USP 1087258 may read on them as a 102. Something like this isn’t necessarily close to the intended invention so it wasn’t applied.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS C DIAZ whose telephone number is (571)270-5461. The examiner can normally be reached M-F 9am-6pm.
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/THOMAS C DIAZ/ Primary Examiner, Art Unit 3617