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 .
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: the “the freewheel device being configured to passively decouple the internal combustion engine” does not appear in the specification. (The spec uses “passive” in paragraph 65 with respect to the engine operation, but does not use “passive” with respect the freewheel or any other coupling.)
Claim Rejections - 35 USC § 112a
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 1-13 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. Applicant defined “passively” using an exclusory proviso (without a control system) in Applicant’s arguments as “The term "passively" conveys that the decoupling simply happens because of the speed difference and thus occurs without a control system directly causing the decoupling.” (Remarks, 27 Aug 2025) This lacks a basis in the original disclosure which places no such limitation on the freewheel, instead claiming quite broadly in a way that suggests the freewheel device can include active decoupling in Applicant’s spec paragraph 10 “The freewheel device does not necessarily have to be designed as a mechanical freewheel; rather, it is sufficient for the freewheel device to provide the corresponding function, regardless of the specific design of the provision of this function. From the point of view of the internal combustion engine, the freewheel device acts like an overrunning gearing: as soon as the rotational speed of the internal combustion engine is lower than the rotational speed of the drive shaft, the internal combustion engine is in a freewheeling mode.” While passive decoupling is discussed at length in the prior art throughout the record, it has not yet been applied to Applicant’s invention. A “passive” freewheel that specifically excludes the use of the control system does not appear to be in the possession of Applicant at the time of filing.
Response to Arguments
Applicant's arguments filed 20 Jan 2026 have been fully considered but they are not persuasive.
Applicant argues that Applicant was in possession of a passive freewheeling device that specifically excludes active decoupling because “The specification is written broadly enough to include passive or active versions of the freewheel device. Neither is explicitly mentioned, but both are implied.” Examiner agrees that neither passive nor active freewheel are explicitly excluded. Per MPEP 2173.05i “Any negative limitation or exclusionary proviso must have basis in the original disclosure. If alternative elements are positively recited in the specification, they may be explicitly excluded in the claims.” The MPEP requires “recited”, but Applicant argues that alternate embodiments that specifically exclude active operation of the nonce “freewheel device” in conjunction with a bridging device are implied rather than explicit. “While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure.” Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022) Applicant’s circumstantial evidence of possession of a passively operating freewheel device that excludes active operation, is that when Applicant wanted to show that overrunning clutches could be passive, Applicant specifically searched using the term “passive.” (See Fig. 1. Below from Applicant’s remarks.). This is evidence that if Applicant wished to specifically wants to show possession of a passive overrunning clutch that excludes active operation, a PHOSITA uses the word “passive.” There is no strong nexus between the Google AI results and Applicant’s specification: Applicant did not search a phrase in Applicant’s disclosure. This weighs against Applicant’s specification specifically excluding active operation because Applicant’s specification does not use “passive” to describe the overrunning clutch or freewheel. Nothing that Applicant specifically searched for using AI indicated that a “passive” freewheel device would be recognized by a PHOSITA in the context the of the claimed separate bridging device. Examiner was not persuaded that Applicant’s original disclosure specifically excluded active clutches by “implying” a passive clutch.
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Fig. 1: Applicant’s AI search explicitly uses the term “passive” to describe passive clutches
Applicant argues that Applicant’s definition of “passive clutch” specifically excluding active operation is consonant with how Bratel uses the term “active” clutch. Examiner agrees. Applicant’s claimed property of “passively” first entered prosecution in response to Bratel being used in a rejection. That Applicant’s invention was first described as not possessing a property mentioned in the prior art is what put Examiner on notice that an exclusory proviso was being used. That Applicant had a chance to amend given Examiner’s position and Applicant did not use the language in the specification to describe Applicant’s “passive” property is further evidence that Applicant’s specification did not describe, explicitly or implicitly “the freewheel device being configured to passively decouple the internal combustion engine”. Examiner was not persuaded that a person of ordinary skill in the would recognize that an active freewheel was specifically excluded by the combination of Applicant’s specification, Applicant’s AI search for “passive”, and Bratel’s disclosure of an active clutch. The examiner maintains the 112a rejection for lack of support of an exclusory proviso.
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 ANDREW POLAY whose telephone number is (408)918-9746. The examiner can normally be reached M-F 9-5 Pacific.
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/ANDREW POLAY/Primary Examiner, Art Unit 3615 1 June 2026
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