DETAILED ACTION
This Office Action is in response to the RCE filed September 2, 1998 for the above identified patent application.
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 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 and 3-16 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The claims define a “speed shifting apparatus” (preamble) capable of continuously varying the speed ratio between an outer rotating wheel and an inner rotating wheel. See paragraph [0005] and elsewhere of the written description. However, it is understood the claimed transmission cannot continuously shift transmission speeds as disclosed, making it impossible for one in the art to make and use the claimed device.
As commonly understood by a mechanical engineer in the art, the transmission speed ratio of a pair of meshing gears is defined as the ratio of the number of teeth of the input wheel to the number of teeth of the output wheel. As noted in the section titled “Background” of the written disclosure (paragraph [0004]), meshing gears with a fixed number of teeth will produce a fixed ratio between the gear set. Referring to Figures 5a-8b, it is understood the number of teeth 8 of the inner wheel and the number of sliding grooves 7 of the outer wheel 3 do not change along the axial direction of the wheels. More specifically, a first end of the transmission illustrated in Figure 5a shows the inner wheel 1 having twelve teeth 8 and the outer wheel 3 having sixteen sliding grooves 7, and a second end of the transmission illustrated in Figure 6a shows the inner wheel 1 having twelve teeth 8 and the outer wheel 3 having sixteen sliding grooves 7, wherein the number of teeth and sliding grooves are the same at each end of the transmission. Since the number of teeth/sliding grooves of the inner wheel and the outer wheel do not change in different operating positions of the meshing members 5, it is understood the claimed transmission is only capable of transmitting torque at a constant speed (not capable of varying the speed).
When moving the meshing members 5 along the sliding groove, the number of teeth are not changed, but remain constant. Consequently, the transmission (speed) ratio does not change, and the disclosed device does not constitute a “speed shifting device” as defined by the claims. Accordingly, an engineer in the art could not make and use the transmission as disclosed.
Response to Arguments
Applicant's arguments filed November 25, 2025 and April 22, 2026 have been fully considered but they are not persuasive.
Applicant argues “The working principle of the claimed speed shifting apparatus is set forth in paragraphs [0014] and [0082]-[0085], for example, which shows how and why the transmission ratio changes as the distance of the meshing member relative to the axis of the inner rotating wheel along the sliding groove changes, and which enables one skilled in the art to make and use the claimed apparatus.”
It is understood the transmission is configured with an inner rotating wheel (1), an outer rotating wheel (3), and a plurality of meshing members (5), the inner wheel and the outer wheel having a conical shape, the inner wheel having a first diameter (D11) at a first end and a second diameter (D12) at a second end, the inner wheel having twelve teeth (8) at both the first end and the second end, the outer wheel having a first diameter (D21) at a first end and a second diameter (D22) at a second end, the outer wheel (3) having sixteen sliding grooves (7) at both the first end and the second end, wherein the meshing members move along the teeth/grooves of the wheels to transmit torque between the inner wheel and the outer wheel.
Referring to the drawings, Figure 5a-b illustrate a cross sectional view of the transmission in a first operational position, wherein the meshing members are positioned at a first end of the transmission device to couple the inner wheel to the outer wheel. In the first operating position (Fig. 5), it is understood that one full rotation of the inner wheel with produce a .75 rotation of the outer wheel. More clearly, the teeth of the inner wheel will engage the grooves of the outer wheel, wherein the inner wheel is formed with 12 teeth that engage 16 grooves of the outer wheel, via the meshing members. Accordingly, the reduction/speed ratio is 12:16 = .75 when the transmission is positioned in the first operating position as shown in Figure 5.
Figure 6a-b illustrate a cross sectional view of the transmission in a second operational position, wherein the meshing members are positioned at a second end of the transmission device to couple the inner wheel to the outer wheel. In the second operating position (Fig. 6), it is understood that one full rotation of the inner wheel with produce a .75 rotation of the outer wheel. More clearly, the teeth of the inner wheel will engage the grooves of the outer wheel, wherein the inner wheel is formed with 12 teeth that engage 16 grooves of the outer wheel, via the meshing members. Accordingly, the reduction/speed ratio is 12:16 = .75 when the transmission is positioned in the second operating position as shown in Figure 6.
Since the first operating position of the transmission (Fig. 5) and the second operating position of the transmission (Fig. 6) both produce a reduction/speed ratio of 12:16 = .75, it is understood the transmission (speed) ratio does not change in different operating positions, and the disclosed device does not constitute a “speed shifting device” as defined by the written disclosure and/or the claims.
Further, Applicant’s comparison of a friction type transmission (figs. 1a-1b) with the meshing type transmission (figs. 2+) does not overcome the prior claim rejection bases on 35 USC 112, first paragraph. It is acknowledged the friction transmission is configured without meshing teeth, wherein the claimed device transmits torque via a plurality of meshing members engaging teeth of a pair of rotating wheels. Since the teeth of each rotating wheel is fixed in all operating positions, it is understood the transmission can only transmit torque at a fixed ratio in all operating positions. Accordingly, one in the art could not make a "speed shifting device" as defined by the claims.
In view of the foregoing, the claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Conclusion
This is a RCE of applicant's earlier Application No. 17/940,099. All claims are identical to, patentably indistinct from, or have unity of invention with the invention claimed in the earlier application (that is, restriction (including lack of unity) would not be proper) and could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the earlier application. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action in this case. See MPEP § 706.07(b). 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 WILLIAM C JOYCE whose telephone number is (571)272-7107. The examiner can normally be reached M-F 8:30-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at 571-270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM C JOYCE/Primary Examiner, Art Unit 3618
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