DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to invent provisions. 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 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.
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 and 3-7 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 and 12 of U.S. Patent No. 12,384,486 B2 (US ‘486) in view of U.S. Patent No. 10,875,600 B1 (“US ‘600”) and U.S. P.G. Publication No. 2003/0029271 A1 (“US ‘271”). Although the claims at issue are not identical, they are not patentably distinct from each other because the scope of the limitations in claims 1 and 3-7 in the instant application are generic or equivalent to the scope of limitations in claims 1 and 12 in U.S. ‘486 except for the recitations regarding that various types of pedal designs have a pedal spindle releasably securable to the pedal adapter, the various types of pedals including a road pedal includes opposing traction platforms rotatable about a road pedal spindle, the road pedal spindle releasably securable to the pedal adapter; wherein a clipless pedal includes opposing clipless brackets rotatable about a clipless pedal spindle, the clipless pedal spindle releasably securable to the pedal adapter; and wherein a combination pedal includes a combination traction platform rotatable about a combination pedal spindle, a combination clipless bracket rotatable about the combination pedal spindle. US ‘600 teaches various types of pedal designs (col. 1, l. 55, “pedal design (e.g. platform vs. quill vs. clipless”) having a spindle releasably secured to a pedal adapter (col. 1, ll. 50-67) for the purposes of providing the option to speedily change pedal design (col. 1, ll. 50-57). US ‘271 teaches various types of pedal designs including a road pedal (14 in FIG. 3B) includes opposing traction platforms (at 15 in FIG. 3B) rotatable about a road pedal spindle (12; ¶ 56); a clipless pedal (14 in FIG. 3A) includes opposing clipless brackets (at 32 in FIG. 3A) rotatable about a clipless pedal spindle (12; ¶ 56); and wherein a combination pedal (14 in FIG. 8) includes a combination traction platform (bottom surface of the pedal body in FIG. 8) rotatable about a combination pedal spindle (12; ¶ 56), a combination clipless bracket (at 32) rotatable about the combination pedal spindle (12; ¶ 56) for the purpose of providing and retaining advantages offered by the different pedal designs (¶¶ 22-27). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify, with a reasonable expectation of success, claims 1 and 12 of US ‘486 to include various types of pedal designs that have a pedal spindle releasably securable to the pedal adapter, the various types of pedals including a road pedal includes opposing traction platforms rotatable about a road pedal spindle, the road pedal spindle releasably securable to the pedal adapter; wherein a clipless pedal includes opposing clipless brackets rotatable about a clipless pedal spindle, the clipless pedal spindle releasably securable to the pedal adapter; and wherein a combination pedal includes a combination traction platform rotatable about a combination pedal spindle, a combination clipless bracket rotatable about the combination pedal spindle, as taught by US ‘600 and US ‘271 above, for the purposes of providing the option to speedily change pedal design and for the purpose of providing and retaining advantages offered by the different pedal designs.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of U.S. Patent No. 12,384,486 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 2 is generic to all that is recited in claims 1 and 8 of U.S. Patent No. 12,384,486 B2. That is, claim 2 falls entirely within the scope of claims 1 and 12 of U.S. Patent No. 12,384,486 B2 and is thereby anticipated by claims 1 and 12 of U.S. Patent No. 12,384,486 B2.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 12 of U.S. Patent No. 12,384,486 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because claim 8 is generic to all that is recited in claims 1 and 8 of U.S. Patent No. 12,384,486 B2. That is, claim 8 falls entirely within the scope of claims 1 and 12 of U.S. Patent No. 12,384,486 B2 and is thereby anticipated by claims 1 and 12 of U.S. Patent No. 12,384,486 B2.
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 DANIEL D YABUT whose telephone number is (571)270-5526. The examiner can normally be reached on Monday through Friday from 9:00 AM to 5:00 PM.
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 John Olszewski can be reached on (571) 272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL D YABUT/Primary Examiner, Art Unit 3656
