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 .
Claim Objections
Claim 7 is objected to because of the following informalities: Claim 7 recites the limitation "the light emitter" in line 2 of the claim. There is insufficient antecedent basis for this limitation in the claim. Since it is readily apparent that this was intended to refer back to the “light source” defined in Claim 1, this does not create an issue of indefiniteness under 35 U.S.C. 112(b). However, the Examiner respectfully suggests amending it to be --the light source .
Appropriate correction is required.
Double Patenting
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 1-13 are rejected under 35 U.S.C. 101 as claiming the same invention as that of Claims 1-13 of prior U.S. Patent No. 12,429,181. This is a statutory double patenting rejection.
In this case, Claim 1 of the instant application is completely identical in scope to Claim 1 of the parent ‘181 patent, despite a minor difference in wording, and Claims 2-13 of the instant application correspond to Claims 2-13 of the parent ‘181 patent, respectfully, as shown in the table below with any differences underlined.
Instant application
US Patent 12,429,181
Claim 1: A sound and illumination bicycle device comprising:
an illumination portion,
a sound-maker coupled to a top side of the illumination portion, and
an attachment portion coupled to a bottom side of the illumination portion,
wherein the illumination portion comprises a cover portion, a lever extending through the cover portion, a switch, a light source, and a power source, and
wherein activation of the lever causes the sound-maker to emit sound and the switch to close a circuit between the power source and the light source such that the illumination portion emits light.
Claim 1: A sound and illumination bicycle device comprising:
a sound-making portion configured to emit sound when activated;
an illumination portion configured to emit light when activated; and an attachment portion, wherein:
the sound-making portion is coupled to a top side of the illumination portion,
the attachment portion is coupled to a bottom side of the illumination portion,
the illumination portion comprises a cover portion, a lever extending through the cover portion, a switch, a light emitting source, and a power source, and
actuation of the lever causes the sound-making portion to emit sound and the switch to close a circuit between the power source and the light emitting source such that the illumination portion emits light.
Claim 2: The device of claim 1, wherein:
the lever comprises a magnet,
the switch comprises a magnetically sensitive component, and
actuation of the lever causes the magnet to activate the magnetically sensitive component of the switch thereby causing activation of the light source of the illumination portion.
Claim 2: The device of claim 1, wherein:
the lever comprises a magnet,
the switch comprises a magnetically sensitive component, and
actuation of the lever causes the magnet to activate the magnetically sensitive component of the switch thereby causing activation of the light emitting source of the illumination portion.
Claim 3: The device of claim 2, wherein the magnetically sensitive component of the switch is a reed switch.
Claim 3: The device of claim 2, wherein the magnetically sensitive component of the switch is a reed switch.
Claim 4: The device of claim 2, wherein the magnetically sensitive component of the switch is a Hall effect sensor.
Claim 4: The device of claim 2, wherein the magnetically sensitive component of the switch is a Hall effect sensor.
Claim 5: The device of claim 1, wherein the light source comprises at least one light emitting diode (LED).
Claim 5: The device of claim 1, wherein the light emitting source comprises at least one light emitting diode (LED).
Claim 6: The device of claim 1, wherein the power source comprises a cell battery.
Claim 6: The device of claim 1, wherein the power source comprises a cell battery.
Claim 7: The device of claim 1, the illumination portion further comprising a printed circuit board (PCB) electrically coupled to and mechanically supporting the light emitter.
Claim 7: The device of claim 1, the illumination portion further comprising a printed circuit board (PCB) electrically coupled to and mechanically supporting the light emitting source.
Claim 8: The device of claim 1, wherein the cover portion of the illumination potion comprises a translucent material.
Claim 8: The device of claim 1, wherein the cover portion of the illumination potion comprises a translucent material.
Claim 9: The device of claim 1, wherein the cover portion comprises two removably attachable portions.
Claim 9: The device of claim 1, wherein the cover portion comprises two removably attachable portions.
Claim 10: The device of claim 1, wherein the attachment portion couples the device to a bicycle handlebar.
Claim 10: The device of claim 1, wherein the attachment portion couples the device to a bicycle handlebar.
Claim 11: The device of claim 1, wherein the switch comprises a conductive portion configured to be actuated by the lever such that the conductive portion moves with the lever and contacts a terminal of an electrical circuit causing energy from the power source to activate the light source of the illumination portion.
Claim 11: The device of claim 1, wherein the switch comprises a conductive portion configured to be actuated by the lever such that the conductive portion moves with the lever and contacts a terminal of an electrical circuit causing energy from the power source to activate the light emitting source of the illumination portion.
Claim 12: The device of claim 1, wherein the sound-maker comprises a striking portion and a metal portion, wherein:
the metal portion covers the lever, a spring, and the striking portion,
the striking portion is coupled to the lever,
the striking portion comprises a rotational element and at least one hammer element, and
when the lever is actuated, the at least one hammer element strikes the metal portion thereby generating sound.
Claim 12: The device of claim 1, wherein the sound-making portion comprises a striking portion and a metal portion, wherein:
the metal portion covers the lever, a spring, and the striking portion,
the striking portion is coupled to the lever,
the striking portion comprises a rotational element and at least one hammer element, and
when the lever is actuated, the at least one hammer element strikes the metal portion thereby generating sound.
Claim 13: The device of claim 1, wherein activation of the light source of the illumination portion is concurrent with activation of the sound-maker.
Claim 13: The device of claim 1, wherein activation of the light emitting source of the illumination portion is concurrent with activation of the sound-making portion.
As shown in the table above, all the limitations of Claim 1 of the instant application are recited in Claim 1 of the parent ‘181 patent, except that the “sound-making portion” of Claim 1 of the parent ‘181 patent is referred to using the broader term “sound-maker” in Claim 1 of the instant application. Accordingly, as shown in the table above, Claims 1-13 of the instant application are completely identical in scope to Claims 1-13 of the parent ‘181 patent, and therefore Claims 1-13 of the instant application are not patentably distinct from Claims 1-13 of the parent ‘181 patent.
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 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-12 of U.S. Patent No. 11,976,803. Although the claims at issue are not identical, they are not patentably distinct from each other because independent Claim 1 and dependent Claim 2 of the instant application are each obvious variants of independent Claim 1 of the parent ‘803 patent, and Claims 3-13 of the instant application correspond to Claims 2-12, respectively, of the parent ‘803 patent, as shown in the table below with any differences underlined.
Instant application:
US Patent 11,976,803
Claim 1: A sound and illumination bicycle device comprising:
an illumination portion,
a sound-maker coupled to a top side of the illumination portion, and
an attachment portion coupled to a bottom side of the illumination portion,
wherein the illumination portion comprises a cover portion, a lever extending through the cover portion, a switch, a light source, and a power source, and
wherein activation of the lever causes the sound-maker to emit sound and the switch to close a circuit between the power source and the light source such that the illumination portion emits light.
Claim 1: A sound and illumination bicycle device comprising:
a sound-making portion;
an illumination portion; and
an attachment portion;
wherein the sound-making portion is coupled to the illumination portion,
wherein the illumination portion is coupled to the attachment portion,
wherein the sound-making portion comprises a lever and a magnet configured to activate the sound-making portion when actuated,
wherein the illumination portion comprises a cover portion, an electrical circuit, a switch comprising a magnetically sensitive component, a light emitting source, and a power source,
the power source configured to power the light emitting source via the electrical circuit in response to the switch being activated, and the cover portion enclosing the electrical circuit, the switch, the light emitting source, and the power source, and
wherein actuation of the lever causes the magnet to activate the magnetically sensitive component of the switch to trigger activation of the light emitting source of the illumination portion.
Claim 2: The device of claim 1, wherein:
the lever comprises a magnet,
the switch comprises a magnetically sensitive component, and
actuation of the lever causes the magnet to activate the magnetically sensitive component of the switch thereby causing activation of the light source of the illumination portion.
Claim 1: A sound and illumination bicycle device comprising:
a sound-making portion;
an illumination portion; and
an attachment portion;
wherein the sound-making portion is coupled to the illumination portion,
wherein the illumination portion is coupled to the attachment portion,
wherein the sound-making portion comprises a lever and a magnet configured to activate the sound-making portion when actuated,
wherein the illumination portion comprises a cover portion, an electrical circuit, a switch comprising a magnetically sensitive component, a light emitting source, and a power source,
the power source configured to power the light emitting source via the electrical circuit in response to the switch being activated, and the cover portion enclosing the electrical circuit, the switch, the light emitting source, and the power source, and
wherein actuation of the lever causes the magnet to activate the magnetically sensitive component of the switch to trigger activation of the light emitting source of the illumination portion.
Claim 3: The device of claim 2, wherein the magnetically sensitive component of the switch is a reed switch.
Claim 2: The device as claimed in claim 1, wherein the magnetically sensitive component of the switch of the illumination portion is a reed switch.
Claim 4: The device of claim 2, wherein the magnetically sensitive component of the switch is a Hall effect sensor.
Claim 3: The device as claimed in claim 1, wherein the magnetically sensitive component of the switch of the illumination portion is a Hall effect sensor.
Claim 5: The device of claim 1, wherein the light source comprises at least one light emitting diode (LED).
Claim 4: The device as claimed in claim 1, wherein the light emitting source of the illumination portion comprises at least one light emitting diode (LED).
Claim 6: The device of claim 1, wherein the power source comprises a cell battery.
Claim 5: The device as claimed in claim 1, wherein the power source of the illumination portion comprises a cell battery.
Claim 7: The device of claim 1, the illumination portion further comprising a printed circuit board (PCB) electrically coupled to and mechanically supporting the light emitter.
Claim 6: The device as claimed in claim 1, the illumination portion further comprising a printed circuit board (PCB) electrically coupled to and mechanically supporting the light emitting source.
Claim 8: The device of claim 1, wherein the cover portion of the illumination potion comprises a translucent material.
Claim 7: The device as claimed in claim 1, wherein the cover portion of the illumination portion comprises a translucent material.
Claim 9: The device of claim 1, wherein the cover portion comprises two removably attachable portions.
Claim 8: The device as claimed in claim 1, the cover portion of the illumination portion comprising two removably attached portions.
Claim 10: The device of claim 1, wherein the attachment portion couples the device to a bicycle handlebar.
Claim 9: The device as claimed in claim 1, wherein the attachment portion couples the device to a bicycle handlebar.
Claim 11: The device of claim 1, wherein the switch comprises a conductive portion configured to be actuated by the lever such that the conductive portion moves with the lever and contacts a terminal of an electrical circuit causing energy from the power source to activate the light source of the illumination portion.
Claim 10: The device as claimed in claim 1, wherein the switch comprises a conductive portion configured to be actuated by the lever such that the conductive portion moves with the lever and contacts a terminal of the electrical circuit casing energy from the power source to activate the light emitting source of the illumination portion.
Claim 12: The device of claim 1, wherein the sound-maker comprises a striking portion and a metal portion, wherein:
the metal portion covers the lever, a spring, and the striking portion,
the striking portion is coupled to the lever,
the striking portion comprises a rotational element and at least one hammer element, and
when the lever is actuated, the at least one hammer element strikes the metal portion thereby generating sound.
Claim 11: The device as claimed in claim 1, wherein the sound-making portion comprises a striking portion and a metal portion, wherein:
the metal portion covers the lever, a spring, and the striking portion,
the striking portion is coupled to the lever,
the striking portion comprises a rotational element and at least one hammer element, and
when the lever is actuated, the at least one hammer element strikes the metal portion thereby generating sound.
Claim 13: The device of claim 1, wherein activation of the light source of the illumination portion is concurrent with activation of the sound-maker.
Claim 12: The device as claimed in claim 11, wherein activation of the light emitting source of the illumination portion is concurrent with activation of the sound-making portion.
As shown in the table above, Claim 1 of the instant application is a broader version of Claim 1 of the parent ‘803 patent. While Claim 1 of the parent ‘803 patent does not specifically recite that the sound-making portion/sound-maker is coupled to a top side of the illumination portion and the attachment portion is coupled to a bottom side of the illumination portion, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the sound and illumination bicycle device of Claim 1 of the parent ‘803 patent by coupling the sound-making portion/sound maker to a top side of the illumination portion and coupling the attachment portion to a bottom side of the illumination portion, since it has been held that rearranging parts of a prior art structure involves only routine skill in the art. See In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). In this case, since the exact location of where the sound-making portion/sound maker is coupled to the illumination portion and where the attachment portion is coupled to the illumination portion is not important as long as the sound-making portion/sound-maker and attachment portion are both coupled to the illumination portion, modifying the sound and illumination bicycle device of Claim 1 of the parent ‘803 patent by coupling the sound-making portion/sound-maker to a top side of the illumination portion and coupling the attachment portion to a bottom side of the illumination portion would have flown naturally to one of ordinary skill in the art as necessitated by the particular design requirements of a given application, in order to reduce the amount of obstacles which might obstruct the sound emitted by the sound-making portion/sound-maker and reduce any obstructions to the emission of light by the illumination portion.
Further, while Claim 1 of the parent ‘803 patent does not specifically recite that the lever extends through the cover portion, one of ordinary skill in the art before the effective filing date of the claimed invention would recognize that since the cover portion of the parent ‘803 patent encloses the electrical circuit, the switch, the light emitting source, and the power source, the lever in Claim 1 of the parent ‘803 patent must also be at least partially covered by the cover portion since it is connected to the switch and the electrical circuit to activate the light emitting source of the illumination portion in both Claim 1 of the parent ‘803 patent and in Claim 1 of the instant application.
Therefore, Claim 1 of the instant application is an obvious variant of Claim 1 of the parent ‘803 patent and is not patentably distinct from Claim 1 of the parent ‘803 patent. Additionally, since Claim 2 of the instant application depends on Claim 1 of the instant application and therefore incorporates all the features of the preceding claim, and all the features of Claim 2 of the instant application are recited in Claim 1 of the parent ‘803 patent, Claim 2 of the instant application is also an obvious variant of Claim 1 of the parent ‘803 patent and is not patentably distinct.
Further, as shown in the table above, since Claims 3-13 of the instant application correspond to Claims 2-12 of the parent ‘803 patent, respectively, Claims 3-13 of the instant application are not patentably distinct from Claims 2-12, respectively, of the parent ‘803 patent.
Allowable Subject Matter
Claims 1-13 would be allowable if rewritten or amended to overcome the Statutory and Nonstatutory Double Patenting rejection(s) set forth in this Office action, or in the case of the Nonstatutory Double Patenting rejections, the timely receipt of a Terminal Disclaimer to overcome the Nonstatutory Double Patenting rejections.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the Prior Art taken as a whole fails to specifically disclose or suggest, in combination, “A sound and illumination bicycle device comprising an illumination portion, a sound-maker coupled to a top side of the illumination portion, and
an attachment portion coupled to a bottom side of the illumination portion,
wherein the illumination portion comprises a cover portion, a lever extending through the cover portion, a switch, a light source, and a power source, and wherein activation of the lever causes the sound-maker to emit sound and the switch to close a circuit between the power source and the light source such that the illumination portion emits light” (emphasis added).
The closest Prior Art, Kessler (WO 2006/113891, previously listed on the IDS filed 9/3/2025), lacks the teaching of the sound-maker being coupled to the illumination portion’s top side, the attachment portion being coupled to the illumination portion’s bottom side, and the lever which causes the sound-maker to emit sound and the light source to emit light extending through the cover portion of the illumination portion, as required by Claim 1.
Accordingly, although sound and illumination bicycle devices are known, as evidenced by the Prior Art already of record, no Prior Art was found teaching individually, or suggesting in combination, all the features of Applicant’s invention, in particular the above limitations in combination with the remaining features of the claim, and there would be no motivation, absent the Applicant’s own disclosure, to modify the references in the manner distinctly and specifically called for in the combination as claimed in Claim 1.
Claims 2-13 depend on Claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Aymar (US 11,518,463), Chen (US 2009/0308301), and Fu (US 6,945,677) all disclose sound and illumination bicycle devices comprising a sound-maker and an illumination portion coupled to each other with an attachment portion that couples the device to a bicycle handlebar.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM N HARRIS whose telephone number is (571)272-3609. The examiner can normally be reached Monday - Thursday 8:00AM- 5:00PM EST, Alternate Fridays.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jong-Suk (James) Lee can be reached at 571-272-7044. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM N HARRIS/Primary Examiner, Art Unit 2875