DETAILED ACTION
Claim Objections
Claims 18-20 are objected to because of the following informalities: in claim 18, the limitation “a supper arm actuator”, in line 10, should be changed to “a support arm actuator”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as "configured to" or "so that"; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function. 2
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: control unit in claims 18-20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. 3 If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 18 and 19 is 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.
Regarding claim 18, there is no supporting disclosure for the contactless sensor to send a “pivot signal” to the control unit. The sensor itself is only disclosed as being capable of sending signals to the control unit relating to relative positions of the wheel and reference point, but the sensor does not determine when the bead breaker disc is supposed to pivot, which is suggested by the term “pivot signal” (as a signal that indicates that the pivoting function should be activated). As best understood by the examiner, the limitation is considered to be intended to define that the contactless sensor sends a signal relating to the distance of the reference point to the wheel, to the control unit, wherein the control unit determines if the signal corresponds a distance that is desirable to activate the pivoting command, and then the control unit will send the pivoting command to the pivoting actuator, and will be treated as such for the sake of the current Office Action.
Regarding claim 19, the disclosure that the control unit is for simultaneously sending a command to the support arm with the pivoting command. The claim limitations are not supported in the original application, with no disclosure of any commands being sent simultaneously. While the specification does provide vague support for the control unit being capable of controlling the support arm actuator, there is no disclosure for any commands being performed simultaneously. For the sake of the current Office Action, the claim will be considered to define that the control unit is capable of sending a command to the support arm actuator and also capable of sending the pivoting command to the bead breaker actuator, but not requiring the commands to be sent simultaneously.
NOTE: The examiner notes that similar claims were previously rejected under 35 U.S.C. 112(a), due to a lack of supporting structure for the control unit that is capable of correlating the position of the tool with the distance of at least one point of the wheel, relative to the reference position, which is a somewhat complex function requiring specific capabilities and/or programming. However, similar rejections are not made for the new claims 18-20 based on a lack of disclosure for the “control unit”. Primarily because the currently claimed functions of “receiving information (from a sensor)” and “sending a command”, are such basic controller functions, that there is no further support required for one of ordinary skill in the art to understand a controller that is capable of the claimed functions. Therefore, the previously applied rejections under 35 U.S.C. 112(a), in Final Rejection dated 28 May 2025, are not considered to be applicable. However, the claimed structure will continue to be viewed as very broadly disclosed in the current application as a whole, and will be treated accordingly for comparison to the prior art.
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 18-20 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.
It is unclear what structure is intended to be defined by the “control unit”, which would appear to invoke 356 U.S.C. 112(f) due to lack of structure in the claim, combined with functional language, whereas the application as a whole fails to provide any specific structure for the control unit. For the sake of the current Office Action, the limitation will be considered to define any electronic or mechanical device that is capable of being programmed to perform the claimed function.
The limitations “the control unit is for…” in each of claims 18-20, is considered to be unclear because it may be interpreted as merely defining an intended use of the control unit, which does not require any specifics of the control unit, other than being capable of performing the claimed tasks (including the possibility of being programmed to perform them), or may be interpreted as positively defining that the control unit is specifically programmed or otherwise configured to perform each of the claimed functions, which would further be unclear due to the lack of disclosure for how the control unit is programmed or otherwise configured to do so. As best understood by the examiner in view of the supporting disclosure of the application as a whole, the limitation is considered to be intended to define that the control unit is merely capable of being programmed or otherwise configured to perform the claimed functions (effectively reading on any electronic control unit, with receiving signals and sending corresponding commands being one of the most basic functions of any controller), and will be treated as such for the sake of the current Office Action.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
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 7, 10, 11, 14 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Clasquin et al. (8,284,390) in view of Danielski et al. (2020/0391560) and Nicolini et al. (2015/0298514).
Regarding claim 7, Clasquin discloses an apparatus (Fig. 4) for demounting a tire from a rim of a vehicle wheel or for mounting a tire on a rim of a vehicle wheel, comprising: a rotary support element (401/406) to which the rim of the wheel is reversibly secured; motor means (436) for rotating the rotary support element; at least one mounting and/or demounting tool (302, 410) for mounting the tire on the rim and/or for demounting the tire from the rim; at least one contactless sensor device (102; imaging sensors), for detecting a distance, with respect to a reference position (location of the sensor), of at least one point belonging to the wheel (Col. 3, lines 54-67); sensor means for detecting the position of the at least one mounting and/or demounting tool (Col. 8, lines 5-16) relative to the reference position; a control unit (CPU 432) for correlating the position of the at least one mounting and/or demounting tool with the distance of the at least one point belonging to the wheel, relative to the reference position (Col. 8, lines 5-16); at least one actuator (514), guided by the control unit, for moving the at least one mounting and/or demounting tool as a function of the distance of the at least one point belonging to the wheel with respect to the reference position (Col. 8 line 58-Col. 9, line 32). However, Clasquin fails to disclose that the at least one sensor device comprises a radar system. Clasquin does however disclose that any number of different types of sensors may be used (Col. 4, lines 21-32 and Col. 9, lines 13-22). Danielski discloses another system for automated tire/wheel service, also using sensors to detect relative positions of the device and a tire for servicing, and to direct components thereof relative to the tire (Paragraph 33), and further teaches that the sensors may also be a provided within a wide range of options, including detection of a reflection (reflective component 130 and signal 132), similar to the sensor of Clasquin, or alternatively may use imaging sensors and possibly including ranging sensors such as RADAR/LIDAR (paragraph 34; “ranging sensors” understood to detect distances, similar to the sensor of Clasquin). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide at least one similar range sensor to any of the potential vision sensors taught by Danielski, either in place of, or in addition to the sensor of Clasquin, being a radar system. Anyone of ordinary skill in the art will recognize that additional sensors or more advanced sensor types would obviously improve imaging and overall detection functions to provide more precise and consistent operations.
Regarding the additional amendments to the claims, reciting the bead breaker being pivotally mounted on the support arm, Nicolini discloses another apparatus for mounting/demounting tires, also having a plurality of tools including a bead breaker disc (21) mounted to an end of a support arm (30), and teaching that the bead breaker disc is preferably mounted pivotally and includes an actuator (33) to allow for adjustment of the inclination of the disc relative to a rim (paragraph 68-29), which would be understood to anyone of ordinary skill in the art to allow the bead breaker disc to adapt to different sizes and shapes of tires and rims for optimal contact orientation. Nicolini further discloses a controller, similar to Clasquin, for using reading from sensors to control the operation of the tool(s). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide the bead breaker disc ((302) of Clasquin, with a similar pivotal connection, controlled by an actuator to pivot the disc relative to the support arm (300), as taught by Nicolini, to provide the similar function of allowing adjustment of the angle of the disc. Further, when combining the tiltable disc of Nicolini with the device of Clasquin, which includes the claimed contactless sensor, and a controller to operate the device depending on readings from the sensor(s), the modified device of Clasquin would obviously be capable of controlling the actuator to pivot the disc when the at least one sensor device detects contact between the bead breaker disc and the wheel (although the specific function is not disclosed by Clasquin or Nicolini, the physical structure made obvious by the combination of the prior art would be capable of performing the claimed function if/when programmed to do so). Because the claim no longer recites any controller configured to perform the claimed function (due to lack of support under 35 U.S.C. 112(a), as discussed in previous Office Actions), the prior art does not need to specifically disclosed the claimed function for the claimed structure to be considered obvious.
Regarding claims 10 and 11, Clasquin further discloses that the at least one contactless sensor device can detect the distance, with respect to the reference position, of a plurality of points belonging to the wheel (line 1 of Abstract of Clasquin), wherein the sensor would obviously be capable of detecting a point belonging to an outer contour of the rim of the wheel or belonging to the sidewall of the tire of the wheel.
Regarding claim 14, Clasquin further discloses that the control unit (CPU 432) is connected (equivalent to “accessible to”, as claimed) to memory means (446,448,450) for storing, at least temporarily, data relating to geometric characteristics of the wheel (last 2 lines of Abstract).
Regarding claim 18, Clasquin, as modified by Danielski and Nicolini provide the apparatus, as discussed supra, for demounting a tire from a rim of a vehicle wheel or for mounting a tire on a rim of a vehicle wheel, having the majority of the claimed structure (claim 18 only differing from claim 7 by including a support arm actuator and control unit). Clasquin further discloses a support arm actuator for moving the support arm (Col. 8, lines 48-57) and a control unit (CPU 432) that is will be operationally connected with the contactless sensor (controller must be connected in some manner to allow the sensor to convey information to the controller, as disclosed) and with the bead breaker actuator (similarly, the control unit must be in communication with the actuator to be capable of controlling the actuator, as disclosed), wherein the control unit is provided for moving the at least one mounting and/or demounting tool as a function of the data provided from the sensors (Col. 8 line 58-Col. 9, line 32), wherein any data sent by the contactless sensor relating to the distance of the reference point to the wheel is considered to be equivalent to a signal, sent to the control unit, wherein the control unit determines if the signal corresponds a distance that is desirable to activate the pivoting command, and then the control unit will send the pivoting command to the pivoting actuator, in the same manner best understood for the current invention (see rejections of claim 18 under 35 U.S.C. 112 above). However, Clasquin fails to disclose that the at least one sensor device comprises a radar system. Clasquin does however disclose that any number of different types of sensors may be used (Col. 4, lines 21-32 and Col. 9, lines 13-22). Danielski discloses another system for automated tire/wheel service, also using sensors to detect relative positions of the device and a tire for servicing, and to direct components thereof relative to the tire (Paragraph 33), and further teaches that the sensors may also be a provided within a wide range of options, including detection of a reflection (reflective component 130 and signal 132), similar to the sensor of Clasquin, or alternatively may use imaging sensors and possibly including ranging sensors such as RADAR/LIDAR (paragraph 34; “ranging sensors” understood to detect distances, similar to the sensor of Clasquin). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to provide at least one similar range sensor to any of the potential vision sensors taught by Danielski, either in place of, or in addition to the sensor of Clasquin, being a radar system. Anyone of ordinary skill in the art will recognize that additional sensors or more advanced sensor types would obviously improve imaging and overall detection functions to provide more precise and consistent operations.
Regarding claim 19, Clasquin further discloses that the control unit is operationally connected with the support arm actuator (Col. 8, lines 48-57); and wherein the control unit sends the pivoting command to the bead breaker actuator to pivot the bead breaker disc, the control unit of Clasquin will also obviously be capable of also sending a command to the support arm actuator to move the support arm in a direction parallel to the axis of rotation of the wheel (vertical mounting of the support arm 510A/510B on the columns 508 will provide a motion parallel to the axis of rotation).
Regarding claim 20, Clasquin further discloses that control unit is for receiving information indicating whether the wheel is in rotation (Col. 6, lines 21-24), wherein the control unit of Clasquin is also obviously capable of being programmed to only send the pivoting command if the wheel is in rotation.
Claims 16 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Clasquin et al. (8,284,390) in view of Danielski et al. (2020/0391560) and Nicolini et al. (2015/0298514) as applied to claim 7, and further in view of Tayama (2018/020811).
Regarding claim 16 and 17, previously incorporated into claim 7, Clasquin and Danielski both disclose a wide range of different sensors, including cameras (paragraph 29 of Danielski), and Tayama discloses another automated control system to detect the distance between a vehicle and an external object, and teaches an alternative to cameras is a radar system, similar to the disclosure of Danielski, and more specifically teaches that the radar system is specifically a millimeter-wave radar operating between 30-300 GHz (Paragraph 46), thus teaching another commonly known and highly accurate distance detecting means. Therefore, it further would have been obvious to one of ordinary skill in the art at the time the invention was made to provide at least one sensor to the device of Clasquin, being a millimeter-wave radar, as taught by Tayama, for additional improvements or adaption for different applications. Note: the term “millimeter-wave radar” is defined by the applicant as being within the disclosed wavelength range, such that the radar disclosed by Tayama is considered to be equivalent to the claimed radar, with the current specification reciting an equivalent range of 30-300 GHz, that is disclosed by the prior art. Further, the newly (positively) claimed range for the frequency of the radar system lies within the disclosed range of 30-300GHz of Tayama, wherein the current application lacks any evidence of criticality or unexpected results for the narrower disclosed range, wherein MPEP 2144.05-I states that “where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists… particularly when there was no showing of criticality of the claimed range”.
Response to Arguments
Applicant's arguments filed 31 October 2025 have been fully considered but they are not persuasive.
The applicant argues the prior art rejection under 35 U.S.C. 103, solely on the basis that one of ordinary skill would not look to Danielski to replace the sensor(s) of Clasquin, suggesting that the sensors of Clasquin provide all of the required information, but the radar sensor taught by Danielski provides only a distance measurement, but no information on the dimensions or features of the wheel. The applicant then suggests that the replacement of sensors of Clasquin would render the device unsatisfactory and would be unnecessary because the radar sensor would provide the same information as the image sensor of Clasquin. In response, the examiner maintains that the Clasquin reference discloses that a wide range of different types of sensors may be used, with Danielski teaching that the radar sensor is a known equivalent to the image sensor disclosed by Clasquin. Further, while the applicant suggests that a radar system is not capable of providing any information about the wheel, the current application teaches that the claimed radar system is capable of “acquiring distances relating to a plurality of points of the wheel and/or tire” (paragraph 98), which will effectively provide the dimensions and features of the wheel, as required by Clasquin. Therefore, the examiner maintains that the teaching of Danielski of the radar system being a known alternative to the image sensor disclosed by Clasquin, as well as common knowledge of one of ordinary skill in the art and the applicant’s own disclosure of the functions of a radar system, it would have been obvious to optionally replace any of the image sensor(s) disclosed by Clasquin, with the radar sensor taught by Danielski, to provide equivalent or more detailed information to the controller, to perform the intended functions of Clasquin. In response to the last part of the applicant’s arguments against the 103 rejection, the examiner has suggested replacing the sensors of Clasquin with the radar sensor, such that there will be no redundancy, as suggested by the applicant. If anything, the applicant’s argument that the radar sensor of Danielski “would provide some of the same information as Clasquin’s image sensor”, only supports the reasoning that the radar sensor would be capable of replacing the image sensor, as applied in the rejections.
Then, similar to arguments made in response to the previous rejections under 35 U.S.C. 112 (from Final Rejection dated 28 May 2025, relating to the “control unit”, the applicant argues the rejection based on the lack of supporting structure for the “control unit”, citing paragraphs 100, 102, 103, 105, 108, 114, 115 as supporting the new claims 18-20. While the examiner agrees that the newly claimed functions are supported, the structure for the claimed “control unit” remains unclear.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BRYAN R MULLER whose telephone number is (571)272-4489. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Brian Keller can be reached on 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRYAN R MULLER/Primary Examiner, Art Unit 3723 13 January 2026
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