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Anyone who has experience trying to pedal a pedal boat knows how much effort it takes propel a craft through water at any reasonable speed simply by pedaling.  Thus, I was intrigued when I learned of a hydrofoil bicycle (https://manta5.com/), and decided to check it out from an IP perspective.

            Based in New Zealand, the company Manta5 touts the Hydrofoiler XE-1 as the world’s first hydrofoil e-bike that replicates the experience of cycling, on water.  Their website indicates that the Hydrofoiler XE-1 is the culmination of seven years of design and development.  Highlights include three electric assist modes, ability to launch from a submerged position, ability to handle choppy water while achieving speeds of up to 13 miles per hour on flat water, and two minute assembly time.  The company is currently taking orders for delivery in late 2019, and thus for the hefty price tag of $7490.00, the Hydrofoiler XE-1 can be yours!

            So, with an admitted seven year design and development stage, what makes the Hydrofoiler XE-1 unique over other prior concepts? 

Figure 1.

Figure 1.

            For this, I turned to relevant patent applications that disclose the concept.  Published in 2015, WO2015093984A1 discloses a hydrofoil bike that, according to the application, combines several novel and inventive features including a means of linking the front and rear frames of the bike, a propeller assembly, a tiller, and a means of adjusting at least one of the foils of the bike when in use.   Specifically, referring to Figure 1, the hydrofoil bike (1) includes a front (2) and rear frame (3).  Handle bars (4) are mounted to the front frame and a seat (5) is mounted to the rear frame.  Both are mounted in such a way that they are adjustable to be suitable for the height of the person (not shown) using the bike.  Also associated with the front frame are a tiller mechanism (6) and a front foil (7).  Associated with the rear frame is a rear foil (8), a drive unit (9), and a propeller assembly (10).  Part of the rear frame (3) is configured with an overhang (11) to assist in the launching of the hydrofoil bike (1) from a stationary object.  However, to date a patent for the hydrofoil bike has not been granted, and thus I turned to the World Intellectual Property Organization (WIPO) to uncover more information relevant to the prosecution of this particular invention.

            To date, a preliminary report on patentability has been issued based on an international search report.  Interestingly, the conclusions of preliminary report are that a number of claims pertaining to WO2015093984A1 are novel over the prior art references cited in the international search report, yet none of the claims are indicated to include an inventive step.  The common theme of the preliminary report as it pertains to lack of inventive step is that limitations not expressly shown by the prior art references cited in the international search report amount to nothing more than mere design choice.  Such reference to design choice is often used by Examiners in formulating rejections, and can be particularly difficult to overcome when the specific element alleged to design choice is not disclosed in the specification as having any unique advantages. Thus, it makes sense here to discuss the issue in more detail.

            Because a drafter of a patent application does not have any idea about the prior art that will be cited by an Examiner years in the future, it can be challenging to know how much detail regarding advantages of particular aspects of an invention to include in the application.  Thus, the situation often arises that patent applicants are left with an obvious design choice rejection with little in the specification for support as to technical advantages.  Fortunately, the Federal Circuit has spoken on this very issue - In re Chu, 66 F.3d 292 (Fed. Cir. 1995).

In the Chu case, the issue was non-obviousness of placing an SCR catalyst in a bag retainer.  In arguing the case, the applicant argued using various pieces of evidence outside of the specification in support.  However, the Board asserted that such arguments were not persuasive because of the lack of advantages cited in the specification, and the locating of the catalyst within the bag retainer did not appear to solve any particular problem or produce an unexpected result. 

(above image by: Oliver Sjöström, Instagram: @ollivves, Website: https://ollivves.com/ )

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