DETAILED ACTION
In the reply filed 1/6/2026, no claims are amended. Claims 1-14, 16-22 are currently pending.
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 .
Response to Amendment
The declaration filed 1/6/2026 under 37 CFR 1.132 is insufficient to overcome the rejection of claims 1-14, 16-22 based upon rejection under 35 U.S.C. 112(a) as set forth in the last Office action because: there is still an insufficiency of disclosure under 35 U.S.C. 112(a).
Affidavits or declarations presented to show that the disclosure of an application is sufficient to one skilled in the art are not acceptable to establish facts which the specification itself should recite. In re Buchner, 929 F.2d 660, 18 USPQ2d 1331 (Fed. Cir. 1991). Affidavits or declarations purporting to explain the disclosure or to interpret the disclosure of a pending application are usually not considered. In re Oppenauer, 143 F.2d 974, 62 USPQ 297 (CCPA 1944). See MPEP 716.
Furthermore, it is noted that the declaration under 37 CFR 1.132 filed 1/6/2026 is signed by the inventor of the present application. An objective standard for determining compliance with the written description requirement is, “does the description clearly allow persons of ordinary skill in the art to recognize that he or she invented what is claimed.” In reGosteli, 872 F.2d 1008, 1012, 10 USPQ2d 1614, 1618 (Fed. Cir. 1989). See MPEP 2163. In evaluating written description, the test for sufficiency “requires an objective inquiry into the four corners of the specification from the perspective of a person of ordinary skill in the art” and “[b]ased on that inquiry, the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
It is understood that Robert Thompson's opinion is an opinion from one having expert skill in the subject matter of the present application, because he is the inventor. The functions/operations, components, and specific mechanical connections of the invention and the limitations recited in the claims would of course be readily understood by the inventor.
For these reasons, the Examiner maintains that such a level of understanding could not be achieved by one having ordinary skill in the art, based on the originally filed disclosure, and the affidavit under 37 CFR 1.132 filed 1/6/2026 is insufficient to overcome the rejection of claims 1-14, 16-22 based upon rejection under 35 U.S.C. 112(a) as set forth in the prior and present official action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-14, 16-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood vy. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
Claims 1-14 and 16-22 require features relating to functions of the rotary drive transmission system.
Claim 1 recites: “the torque transfer arrangement including a selectively engageable gear change set having a plurality of user selectable gear ratios”.
Claim 6 recites: “the braking formation is coupled to be rotationally driven at an angular velocity equal to or greater than that of the output shaft of the hub drive.”
Claim 7 recites: “the braking formation is coupled to be rotationally driven at an angular velocity greater than that of the output shaft of the hub drive”.
Claim 8 recites: “the selectively engageable gear change set is configured to reduce a higher input shaft angular velocity to a lower output shaft angular velocity and the braking formation is coupled to be rotationally driven by the selectively engageable gear change set having an angular velocity greater than that of the output shaft.”
Claim 20 recites: “a gearing assembly configured to reduce a higher input shaft angular velocity to a lower output shaft angular velocity, the gearing assembly including a selectively engageable gear change set having a plurality of user selectable gear ratios rotationally coupled to a final reduction gear which drives the output shaft of the hub drive, and the braking formation is coupled to be rotationally driven by the gearing assembly having an angular velocity greater than that of the output shaft”.
Claims 1-14 and 16-22 require limitations which functionally describe elements of the claimed invention, without setting forth sufficient structure for performing the function. Components which cause the braking formation to reach the claimed velocities are not described. Parts of the rotary drive transmission system are described in terms their function, and they lack written descriptive support. These unlimited functional claim limitations extend to all means or methods of resolving a problem and are not adequately supported by the written description or commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. Applicant has described functions throughout the claims and specification, without structure which would facilitate the carrying out of these functions. The disclosure provides only a generic description of exemplary gearing arrangements. Further, the drawings provide no diagram which could reveal how the gears/components function to reduce rotational speed, or how a user may select a gear ratio. For example, the disclosure describes examples of a gear change set, but there is no specific discussion of the gears within the set, or how the set is implemented into the claimed hub drive. No parts or components of the gearing assembly are sufficiently disclosed to yield proper understanding of the claimed invention.
Regarding claim 1, the claimed selectively engageable gear change set having a plurality of user selectable gear ratios is not sufficiently disclosed. The schematic nature of the drawings prevents proper understanding of critical components. This limitation is discussed only in Applicant’s paragraph [0032], however the gearing assembly is not described with adequate specificity that those having ordinary skill in the art would reasonably conclude that the inventor had possession of the claimed invention. The disclosure provides only a generic description of exemplary gearing arrangements. Further, the drawings provide no diagram which could reveal how the gears/components operate. For example, the disclosure describes examples of a gear change set, but there is no specific discussion of the gears within the set. What gears make up the selectively engageable gear change set? How is it selectively engageable? Is there an interface for a user to select a gear ratio (for example, like a manual-style transmission)? How is the drive transmission system coupled to drive the braking formation? No parts or components of the gearing assembly are sufficiently disclosed to yield proper understanding of the claimed invention.
Regarding claim 6, what causes the braking formation to be rotationally driven at an angular velocity equal to or greater than that of the output shaft of the hub drive? Is the braking formation formed integrally with a gearing component having the claimed angular velocity? No parts or components of the braking formation or rotary drive transmission system are sufficiently disclosed to yield proper understanding of the claimed invention.
Regarding claim 7, what causes the braking formation to be rotationally driven at an angular velocity greater than that of the output shaft of the hub drive? Is the braking formation formed integrally with a gearing component having the claimed angular velocity? No parts or components of the braking formation or rotary drive transmission system are sufficiently disclosed to yield proper understanding of the claimed invention.
Regarding claim 8, how does the selectively engageable gear change set reduce a higher input shaft angular velocity to a lower output shaft angular velocity? How is the braking formation coupled to be rotationally driven by the selectively engageable gear change set having an angular velocity greater than that of the output shaft? No parts or components of the braking formation or rotary drive transmission system are sufficiently disclosed to yield proper understanding of the claimed invention.
Regarding claim 20, the claimed gearing assembly and selectively engageable gear change set having a plurality of user selectable gear ratios is not sufficiently disclosed. The schematic nature of the drawings prevents proper understanding of critical components. The gearing assembly is not described with adequate specificity that those having ordinary skill in the art would reasonably conclude that the inventor had possession of the claimed invention. The disclosure provides only a generic description of exemplary gearing arrangements. Further, the drawings provide no diagram which could reveal how the gears/components function to reduce rotational speed. For example, the disclosure describes examples of a gear change set, but there is no specific discussion of the gears within the set. How does the gearing assembly reduce a higher input shaft angular velocity to a lower output shaft angular velocity? What gears make up the selectively engageable gear change set? How is it selectively engageable? Is there an interface for a user to select a gear ratio (for example, like a manual-style transmission)? How is the gearing assembly coupled to drive the braking formation? No parts or components of the gearing assembly are sufficiently disclosed to yield proper understanding of the claimed invention.
Because the patent specification fails to describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention, the claims are found to not satisfy the written description requirement. The Applicant fails to show possession of the claimed invention because the Applicant has not sufficiently described the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. See MPEP 2163 and 2173.05(g).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-14 and 16-22 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites: “the torque transfer arrangement including a selectively engageable gear change set having a plurality of user selectable gear ratios”.
Similarly, claim 20 recites: “the gearing assembly including a selectively engageable gear change set having a plurality of user selectable gear ratios rotationally coupled to a final reduction gear.”
How does a user select the gear ratios? Is there an interface? Does the limitation imply the gearing includes a manual-style transmission? What are the gears and is there a mechanism for engaging one of plurality of ratios? Because there is no disclosure of how a gear ratio is selectable by a user, the metes and bounds of the claim are not reasonably ascertainable.
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.
Claims 1-11, 14, 16-21 are rejected under 35 U.S.C. 103 as being unpatentable over Gauthier (US 6,661,137) in view of Ogata (US 8,360,185).
Regarding claim 1, Gauthier teaches: an electric hub drive, comprising:
a housing (including, but not limited to, elements 3, 33, and 36);
a rotary drive transmission system including an input shaft (13), output shaft (the inboard side of element 27), and a torque transfer arrangement (see elements 15, 24, 25, which together with the output shaft 27, form a planetary gearing arrangement) to effect a rotational coupling between the input shaft and the output shaft mounted within the housing;
an electric motor (6, 10) for driving the input shaft mounted within the housing;
a braking assembly including a braking formation (37) positioned within the housing,
the braking formation configured to be coupled to be rotationally driven by the drive transmission system; and
wherein the hub drive has an inboard side (the side located on the right, from the perspective shown in Fig. 1) for positioning proximal to a vehicle and an outboard side for positioning distal to a vehicle, and the braking formation is positioned on the inboard side.
Bearings (4) facilitate a swivel mount; the swiveling capabilities would provide that either side of the hub drive can be positioned on a vehicle the inboard side.
Relevant elements are best shown in Fig. 1.
Gauthier fails to teach the torque transfer arrangement including a selectively engageable gear change set having a plurality of user selectable gear ratios. Ogata teaches a rotary drive transmission system including a torque transfer arrangement (see the gearing system shown in Fig. 7) including a selectively engageable gear change set (32-36) having a plurality of user selectable gear ratios (each of the gear pairs 32-36 establish a gear ratio; the user may select gear ratios using a shift lever interface, such as shown in Fig. 2; for example, the user may shift into reverse to engage gears 32).
Before the effective filing date of the claimed invention, it would be obvious to those having ordinary skill in the art to provide the torque transfer arrangement from Ogata in place of the torque transfer arrangement from Gauthier; the motivation being: the selectability of one of a plurality gear ratios enables the hub drive to operate with greater efficiency according to the torque and power needs of the user/vehicle. Such a modification could also yield simplified motor controls.
Regarding claim 2, the combination further teaches: wherein the braking formation is carried on a drive shaft (14) coupled to be driven rotationally by the drive transmission system. See Fig. 1 from Gauthier
Regarding claim 3, the combination further teaches: the braking formation is a friction formation selectively engageable against one or more complementary friction surfaces carried within the housing. See the surfaces at the outer sides of brake disc 37 in Fig. 1 from Gauthier. See also column 5, lines 12-21 from Gauthier.
Regarding claim 4, the combination further teaches: the braking formation includes at least one brake disc (37; see Fig. 1 from Gauthier).
Regarding claim 5, the combination further teaches: at least one brake disc is mounted co- axially on a shaft (14) coupled to be driven rotationally by the drive transmission system. See Fig. 1 from Gauthier.
Regarding claim 6, the combination further teaches: the braking formation is coupled to be rotationally driven at an angular velocity equal to or greater than that of the output shaft of the hub drive. See Fig. 1 from Gauthier and Fig. 7 from Ogata.
Regarding claim 7, the combination further teaches: the braking formation is coupled to be rotationally driven at an angular velocity greater than that of the output shaft of the hub drive. See Fig. 1 from Gauthier and Fig. 7 from Ogata.
Regarding claim 8, the combination further teaches: the selectively engageable gear change set is configured to reduce a higher input shaft angular velocity (see element 30 from Ogata, analogous to element 13 from Gauthier) to a lower output shaft (see element 39 from Ogata, analogous to output element 27 from Gauthier) angular velocity and the braking formation is coupled to be rotationally driven by the selectively engageable gear change set having an angular velocity greater than that of the output shaft. See Fig. 1 from Gauthier and Fig. 7 from Ogata.
Regarding claim 9, the combination further teaches: the selectively engageable gear change set includes a final reduction gear (37 from Ogata) configured to drive the output shaft (39 from Ogata) of the hub drive, and the braking formation is coupled (at least indirectly) to the final reduction gear. See Fig. 1 from Gauthier and Fig. 7 from Ogata.
Regarding claim 10, the combination further teaches: wherein the friction surface(s) comprise the surfaces of one or more brake pads carried within the housing. See Fig. 1 and column 5, lines 12-21 from Gauthier.
Regarding claim 11, the combination further teaches: wherein a plurality of brake pads
are provided on one or more carrier formations. See Fig. 1 and column 5, lines 12-21 from Gauthier.
Regarding claim 14, the combination further teaches: wherein the braking assembly further includes actuation means (40) to effect selective engagement and disengagement of the braking formation against the friction surface(s). See Fig. 1 and column 5, lines 12-21 from Gauthier.
Regarding claim 16, the combination further teaches: wherein the braking formation includes a brake shaft (13) connecting (at least indirectly) a brake disc (37) to a fixed ratio reduction output gear (see Fig. 7 from Ogata), the brake shaft separate from the motor and extending through the motor. The brake shaft is separate from the motor at least in that the shaft (13) is not a component of the motor (6, 10). See Fig. 1.
Regarding claim 17, the combination further teaches: wherein the torque transfer arrangement includes a gearing assembly (see Fig. 7 from Ogata) wherein the motor is interposed between the braking formation and the gearing assembly. See Fig. 1 from Gauthier.
Regarding claim 18, the combination further teaches: wherein the housing is adapted to fit within the wheel rim (30) of a wheel. See Fig. 1 from Gauthier.
Regarding claim 19, the combination further teaches: wherein the housing is cooled. The housing is at least cooled by airflow around the housing and/or lubricant within the housing. See Fig. 1 from Gauthier.
Regarding claim 20, Gauthier teaches: an electric hub drive, comprising:
a housing (including, but not limited to, elements 3, 33, and 36);
a rotary drive transmission system including an input shaft (13), output shaft (the inboard side of element 27), and a torque transfer arrangement (see elements 15, 24, 25, which together with the output shaft 27, form a planetary gearing arrangement) to effect a rotational coupling between the input shaft and the output shaft mounted within the housing;
an electric motor (6, 10) for driving the hub drive input shaft mounted within the housing; and
a braking assembly including a braking formation (37) positioned within the housing, the braking formation configured to be coupled to be rotationally driven by the drive transmission system,
wherein the torque transfer arrangement includes a gearing assembly (the planetary gearing arrangement described above) configured to reduce a higher input shaft angular velocity to a lower output shaft angular velocity, and the braking formation is coupled to be rotationally driven by the gearing assembly having an angular velocity greater than that of the output shaft, and
wherein the motor is interposed between the braking formation and the gearing assembly, and
the braking formation is coupled to the final reduction gear (torque is communicated between the braking formation and the final reduction gear).
Relevant elements are best shown in Fig. 1.
Gauthier fails to teach the gearing assembly including a selectively engageable gear change set having a plurality of user selectable gear ratios rotationally coupled to a final reduction gear. Ogata teaches a rotary drive transmission system including a gearing assembly (see the gearing system shown in Fig. 7) including a selectively engageable gear change set (32-36) having a plurality of user selectable gear ratios (each of the gear pairs 32-36 establish a gear ratio; the user may select gear ratios using a shift lever interface, such as shown in Fig. 2; for example, the user may shift into reverse to engage gears 32) rotationally coupled to a final reduction gear (37) which drives an output shaft (39).
Before the effective filing date of the claimed invention, it would be obvious to those having ordinary skill in the art to provide the torque transfer arrangement from Ogata in place of the torque transfer arrangement from Gauthier; the motivation being: the selectability of one of a plurality gear ratios enables the hub drive to operate with greater efficiency according to the torque and power needs of the user/vehicle. Such a modification could also yield simplified motor controls.
Regarding claim 21, the combination further teaches the selectively engageable gear change set includes a gearbox having the gear change set having the plurality of user selectable gear ratios See Fig. 7 from Ogata.
Claims 12 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Gauthier and Ogata, as applied above, in further view of Erlston (US 2006/0260886).
Regarding claim 12, Gauthier does not specifically discuss various physical details of the brake pads, or their respective arrangement on the carrier discs. As such, Gauthier fails to disclose the plurality of brake pads are provided disposed across the surface of each of one or more carrier formations in the form of carrier discs. Erlston teaches a braking assembly wherein a plurality of brake pads (72) are provided disposed across the surface of each of one or more carrier formations (70) in the form of carrier discs. See Fig. 13. Before the effective filing date of the claimed invention, it would be obvious to those having ordinary skill in the art to provide the braking assembly disclosed by Gauthier with the brake pads and carrier formations disclosed by Erlston; the motivation being: to enable fast braking by providing a large frictional braking surface area, and for providing radially even pressure to the brake disc.
Regarding claim 13, the combination further teaches: wherein the braking formation comprises at least one brake disc (element 37 from Gauthier, which is analogous to element 14 from Erlston), and wherein a pair of said carrier discs are provided, one disposed on either side of the brake disc, so as to engage a respective surface of the brake disc and effect a braking action in use. See Fig. 1 from Gauthier and Fig. 13 from Erlston.
Claim 22 is rejected under 35 U.S.C. 103 as being unpatentable over Gauthier and Ogata, as applied above, in further view of Yamamoto (US 8,772,991).
Regarding claim 22, Gauthier fails to teach: a cooling mechanism positioned on the inboard side of the hub drive and adjacent the braking formation. Yamamoto teaches: a cooling mechanism positioned on the inboard side of the hub drive and adjacent the braking formation. See cooling paths 22e in Fig. 2. The braking formation is described in column 11, lines 1-19. Before the effective filing date of the claimed invention, it would be obvious to those having ordinary skill in the art to provide the Gauthier with a cooling mechanism, as suggested by Yamamoto; the motivation being: for effectively cooling, and preventing the overheating of drive components of the electric hub drive.
Response to Arguments
Applicant's arguments filed 1/6/2026 have been fully considered, but are not persuasive.
Applicant presents remarks with regards to the 35 USC 112 (a) rejection(s).
Applicant’s remarks with regards to the 35 USC 112 (a) rejection(s) point to statements in the Declaration, however, these arguments are found unpersuasive because the declaration is insufficient, as discussed above.
Applicant states: “The technology is substantially basic, and relates to a transmission with gear sets and a braking assembly in a hub drive. The specific arrangement of each of these structures in the housing of the hub drive distinguishes the claimed invention from the cited art (as will be described in more detail below). Thus, Applicant should be considered to have met the written description requirement if a POSITA would have understood what type of structure or structures could be considered to be a gear change set (as well as the other features noted as rejected under 35 USC 112(a)).”
The Examiner acknowledges that gear sets and braking assemblies, when considered independently (without the context of implementation), may be understandable by PHOSITA. However, based on the disclosure, PHOSITA would not understand how the gear change set and braking assembly could operate and interact to achieve the claimed functions and capabilities.
Applicant states: “it is respectfully submitted that the Office Action's request for either more specificity or narrower disclosure does not meet its burden to prove that the written description is actually inadequate, and therefore Applicant respectfully submits that the Office cannot maintain the present rejection under 35 USC 112(a).”
Critical details which are necessary for PHOSITA to understand the claimed invention are absent from the disclosure. The questions posed about the invention in the 35 USC 112(a) discussion are intended to emphasize examples of what details PHOSITA would need to know to gain sufficient understanding.
Applicant states: “the above noted grounds for rejection continue to allege a broad scope of the claims is a proper basis to support a written description rejection.” The Examiner respectfully disagrees. The breath of the claims was/is not a basis for these rejections.
Applicant states: “various features are claimed in a broad manner because Applicant is not relying on the specific mechanical parameters (for example, the specific components of a braking formation are not recited in certain claims because Applicant does not want to limit the claims to a particular braking formation and instead calls out the existence of and location of the braking formation within the hub drive).” The breath of the claims was/is not a basis for these rejections. As stated above, because the patent specification fails to describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention, the claims are found to not satisfy the written description requirement. The Applicant fails to show possession of the claimed invention because the Applicant has not sufficiently described the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth by the claimed invention. See MPEP 2163 and 2173.05(g).
Applicant states: “Applicant notes that all of the terms and phrases objected to in the Office Action were not only included in the original claim set of the present application, but were also disclosed in the Specification of the present application and the claims and Specification of the parent application. To reject the claims as failing the written description requirement is an error in law. As indicated above, and as acquiesced in the Office Action, an original claim is presumed to have adequate written description. Thus, the Office has the burden of showing that the claim lacks written description (MPEP §§ 2163.03 (V) and 2163.04).”
The Examiner acknowledges the consistent terminology utilized in the present and parent application. The Examiner has reviewed the claims and applied the appropriate rejection(s) under 112(a). The Examiner acknowledges the burden of showing that the claim lacks written description, and a thorough discussion is included above, and in the prior Action(s).
Please see also MPEP 2163.03 (V):
While there is a presumption that an adequate written description of the claimed invention is present in the specification as filed. In re Wertheim, 541 F.2d 257, 262, 191 USPQ 90, 96 (CCPA 1976), a question as to whether a specification provides an adequate written description may arise in the context of an original claim. An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1349-50 (Fed. Cir. 2010) (en banc). The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. "Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement."Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 968, 63 USPQ2d 1609, 1616 (Fed. Cir. 2002).
In essence, the claims require a transmission system, but the disclosure does not reveal how the transmission system works. To sufficiently understand the claimed invention, those having ordinary skill in the art would require disclosure of the individual gears (and a description of which other gears they each mesh with), clutch(es), mechanisms which facilitate user input (for gear ratio selection), and any other components which communicate rotary motion between the brakes, input shaft, and output shaft. Without these details, those having ordinary skill in the art cannot understand how the claimed invention operates.
Applicant states: “The test [for written description] is not whether the features are recited narrowly enough. There should be no doubt here that Applicant invented and possessed the claimed subject matter at the time of filing.” The Examiner respectfully disagrees. The breath of the claims was/is not a basis for these rejections.
Applicant states: “Applicant respectfully submits that claim features such as the claimed 'braking formation", "gear assembly" and other features would have been inherently understood by the POSITA and therefore require no further definition or explanation in the present claims or specification.” The Examiner acknowledges that these terms, when considered independently, may be understandable by PHOSITA. However, based on the disclosure, PHOSITA would not understand how the braking formation and gear assembly could operate and interact to achieve the claimed functions and capabilities.
Applicant presents remarks with regards to the 35 USC 112 (b) rejection(s). These remarks point to the declaration filed 1/6/2026, are not persuasive for the same/similar reasons as discussed above.
Applicant presents remarks with regards to the 35 USC 103 rejection(s).
With regard to the combination of Gauthier and Ogata, Applicant states: “Applicant respectfully submits that the proposed combination would not have resulted in Applicant's claimed invention, and that the motivational statement is also irreparably flawed.”
The Examiner respectfully disagrees, and maintains that it would be obvious to those having ordinary skill in the art to provide the torque transfer arrangement from Ogata in place of the torque transfer arrangement from Gauthier; the motivation being: the selectability of one of a plurality gear ratios enables the hub drive to operate with greater efficiency according to the torque and power needs of the user/vehicle. Such a modification could also yield simplified motor controls.
The modification would not render Gauthier unsuitable for it’s intended purpose. If Gauthier’s torque transfer arrangement is small enough to suitably fit into Gauthier’s device, those having ordinary skill in the art would reasonably conclude that another gearing arrangement could also be suitably scaled/sized, while keeping the device suitable for its intended purpose.
Applicant points to features from Ogata: arrangement of motors outside the wheel hubs, wide layout, size, etc. These remarks are irrelevant as the modification does not propose adopting the layout and scale of the drivetrain in the vehicle from Ogata.
In response to applicant's argument that Ogata teaches a four-wheel drive hybrid automobile (with a liquid fuel engine, and motors not mounted within wheel hubs), the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Applicant emphasizes that Ogata teaches away from the modification. These arguments are not persuasive because Gauthier is modified in the combination, and not Ogata. Whether or not Ogata teaches away from a modification is irrelevant because the combination proposes modifying Gauthier, not Ogata. Applicant’s remarks (see especially pages 13-18) suggest that Applicant is reading additional features from Ogata into the combination which are not relevant to Gauthier, as modified.
Applicant states: “with respect to claim 1, Applicant respectfully submits that the feature of "the hub drive has an inboard side for positioning proximal to a vehicle and an outboard side for positioning distal to a vehicle, and the braking formation is positioned on the inboard side" where the "braking formation is configured to be coupled to be rotationally driven by the drive transmission system" is absent from both Gauthier and Ogata. With regard to claim 20, neither Gauthier nor Ogata disclose or teach the features of a "braking assembly including a braking formation positioned within the housing, the braking formation being coupled to be rotationally driven by the drive transmission system." These features further distinguish Applicant's claims 1 and 20 from Gauthier and Ogata, where Gauthier is directed to a completely different type of device (i.e., a goods handling cart) as compared to Applicant's invention which is directed to a more typical and generally larger vehicle whose drive wheel has an inboard side and outboard side.”
The Examiner maintains these features are taught by the combination. See the location of the braking formation in Fig. 1 from Gauthier. This braking formation rotates synchronously with the input shaft if the combination. The input shaft (13) from Gauthier’s drive transmission system is analogous to the input shaft (30) from Ogata.
Applicant’s claims do not require a vehicle. The phrase “for positioning” expresses an intended use, and the position relative to the vehicle is not explicitly required by the claim. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the type of vehicle onto which the invention is intended to be mounted) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant states: “a selectively engageable gear change set typically requires a clutch arrangement to disengage the drive motor while selecting between different gear ratios. A clutch arrangement introduces the problem of lack of braking effect if the clutch is interposed between the driven / driving wheel and the braking assembly. Braking problems are obviated by Applicant's claimed drivetrain configuration wherein the braking formation has a torque coupling to an input of the final [fixed] reduction gear, thereby bypassing any clutch.”
These remarks are not understood. How is bypassing any clutch achieved when Applicant’s own torque coupling is described as a clutch? See at least [0050] from Applicant’s own specification. Additionally, the “torque coupling” is not found in the claims.
Applicant presents no specific arguments regarding the dependent claims. Applicant asserts that the dependent claims are in condition for allowance by virtue of their dependency from claims 1 and 20, respectively. Because arguments relating to claims 1 and 20 are not found persuasive, the rejection of dependent claims 2-14, 16-19, 21-22 is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EMMA K FRICK whose telephone number is (571)270-5403. The examiner can normally be reached 9AM-5PM EST M, T, F.
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/EMMA K FRICK/Primary Examiner, Art Unit 3613