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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 9, 2026, including the amendment and remarks filed April 13, 2026, has been entered.
Response to Arguments
Applicant’s arguments regarding the 35 U.S.C. 102/103 rejections related the Hansen (pages 6-9) have been fully considered and – in light of the amendment - are persuasive, therefore the related rejections have been withdrawn, however a new grounds of rejection has been found based on Kinka, see the related 102/103 rejections below.
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 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) 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):
(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.
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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f), 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f), is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
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) 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 is:
“receiving area” introduced in claim 18
uses a nonce term “area”
the nonce term being modified by the functional language “receive” which is linked with the linking phrase “configured to”
no structure for performing the function being claimed
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
Particularly:
“receiving area” is interpreted as a “conventional cassette receiving area” or its equivalents based on Para. [0022] of the instant application’s written description.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) (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).
Claim Objections
Claims 18, 23, and 36 are objected to because of the following informalities: the word “pinion” is misspelled as “pinon” in line 3 of claim 18, line 7 of claim 23, and line 5 of claim 36. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 18, 20, and 22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kinka (EP-0583510-A1) (note: the underlined portions relate to the latest amendment or other differences from the previous office action, for the applicant’s convenience).
Regarding Claim 18, Kinka teaches a hub for a bicycle running wheel (Hub Body 10, Fig. 1), the hub comprising:
a hub body (Hub Body 10, Fig. 1); and
a receiving area (Barrel 12, Fig. 1, considered an equivalent of a cassette receiving area; see the corresponding 112f claim interpretation discussion above) configured to receive a cassette (Sprockets 30, Fig. 3) being a {pinion} package comprising a plurality of pinions (a plurality of Sprockets 30 being illustrated in Fig. 3),
wherein the hub body (10) and the receiving area (12) are a single part (Figs. 1 and 3).
Regarding Claim 20, Kinka further teaches that the hub comprises no freewheel (Sprockets 30 being connected to Hub Body 10 via Sleeve 32 as illustrated in Fig. 1).
Regarding Claim 22, Kinka further teaches that the receiving area (12) has a receiving profile (a profile of Barrel 12 being illustrated in Fig. 3) configured to receive and/or fix the cassette (Barrel 12 receiving Sprockets 30 as illustrated in Fig. 3).
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.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Kinka.
Regarding Claim 19, although Kinka does not specifically teach that the hub body is formed by being milled, the limitation “the hub body and the receiving area are milled together from the single part” is a product by process limitation, wherein “milled together from the single part” is the process by which the hub body and the receiving area are produced. As this limitation is a product by process limitation, the limitation is only examined with regard to the claimed product, a hub for a bicycle running wheel. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113. Kinka discloses the hub body and the receiving area. Accordingly, Kinka discloses the limitation of “the hub body and the receiving area are milled together from the single part”. Please note that in the instant application, the applicant has not disclosed any criticality for the claimed limitation.
Claims 18, 23, 26, 28-29, 31, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Hendey (US-20160303961-A1) in view of Kinka.
Regarding Claim 18, alternately and in addition to the 102 rejection based on Kinka above, Hendey teaches a hub for a bicycle running wheel (Rear Wheel 802 being illustrated with a hub in Fig. 5), the hub comprising:
a hub body (a hub body being illustrated in Fig. 5); and
a receiving area configured to receive a [sprocket] (the hub of Rear Wheel 802 being connected to Chain or Belt 870 with a chain sprocket as taught in Fig. 6 and Para. [0035], necessitating a chain sprocket connection to the hub; a chain sprocket connection and chain sprocket being considered equivalents of a cassette receiving area and a cassette),
Hendey does not teach a cassette comprising a plurality of pinions or that the hub body and the receiving area are a single part.
Kinka teaches a cassette comprising a plurality of pinions and a hub body and receiving area that are a single part (see the 102 rejection of claim 18 above for the teachings of Kinka).
It would have been obvious to a person of ordinary skill in the art having the teachings of Hendey and Kinka in front of them before the effective filing date of the claimed invention, to modify Hendey’s hub to include a cassette comprising a plurality of pinions and a hub body and receiving area that are a single part as suggested by Kinka. A person of ordinary skill in the art would have appreciated the advantage of providing multiple gear choices and a robust connection between power transmission components that would beneficially make a more versatile and robust hub.
Regarding Claim 23, Hendey teaches a bicycle (Bicycle 1000, Fig. 5) comprising:
a frame (Frame 600, Fig. 3) with a bottom bracket region (Bottom Bracket Shell 670, Fig. 3);
a bicycle running wheel (Rear Wheel 802, Fig. 5); and
a bicycle drive system (Drive System 200, Fig. 5) comprising:
a hub (Rear Wheel 802 being illustrated with a hub in Fig. 5) comprising:
a hub body (a hub body being illustrated in Fig. 5); and
a receiving area configured to receive a [sprocket] (the hub of Rear Wheel 802 being connected to Chain or Belt 870 with a chain sprocket as taught in Fig. 6 and Para. [0035], necessitating a chain sprocket connection to the hub; a chain sprocket connection and chain sprocket being considered equivalents of a cassette receiving area and a cassette),
wherein the hub is arranged in the bicycle running wheel (as illustrated in Fig. 5), and
wherein the [sprocket] is arranged on the receiving area of the hub (as understood from Fig. 6);
a chain (Chain 870, Fig. 6);
a drive (Drive System 200, Fig. 1) arranged in the bottom bracket region (Drive System 200 being arranged in Bottom Bracket Shell 670 as illustrated in Fig. 3), the drive (200) comprising a pedal crank (Left and Right Crankshafts 850L and 850R, Fig. 6 and Para. [0035]) including a chainring (Sprocket 860, Fig. 6),
wherein the [sprocket] is drivable via the chain (870) by the drive (Para. [0035] teaches that the Rear Wheel 802 is driven by Chain or Belt 870); and
a freewheel (Freewheel Coupler 270, Fig. 12) arranged in the bottom bracket region between the chain and the drive (Freewheel Coupler 270 being arranged in Drive System 200 which is in Bottom Bracket Shell 670 as discussed above, and considered to be between the Chain or Belt 870 and the Drive System 200 in that Para. [0044] teaches that an Inner Spindle 245 of Drive System 200 sends power to Chain or Belt 870 through Freewheel Coupler 270).
Hendey does not teach a cassette or that the hub body and the receiving area are a single part, but Kinka does (see the 103 rejection of claim 18 above for the teachings of Kinka and motivation to combine them with the hub/ bicycle of Hendey).
Regarding Claim 26, Hendey further teaches that the freewheel (270) is arranged between the pedal crank (850L & 850R) and the chainring (Paras. [0045]- [0046] teach that the Freewheel Coupler 270 couples or decouples a Spider 202 to the Inner Spindle 245, which is taught there as powered by pedals understood to be connected to Cranks 850L & 850R, the Spider 202 being connected to Sprocket 860 as taught in Para. [0043]).
Regarding Claim 28, Hendey further teaches that the drive (200) further comprises an electric motor (Electric Motor 300, Fig. 1).
Regarding Claim 29, Hendey further teaches that the bicycle drive system is arranged such that the electric motor (300) is drivable by the chain (870) driven by the hub (Para. [0047] teaches a mode of use in which the Rear Wheel 802 drives Electric Motor 300 through Spider 202, which is connected to Chain or Belt 870 as discussed in the 103 rejection of claim 26 above) and such that the electric motor (300) acts as a generator during recuperation thereby recharging an accumulator (Battery Pack 500, Fig. 1) assigned to the electric motor (Para. [0047] teaches a mode in which the Electric Motor 300 charges a Battery Pack 500, the Battery Pack 500 being configured to provide power to- i.e. is assigned to- Electric Motor 300 as taught in Para. [0032]).
Regarding Claim 31, Hendey further teaches that the electric motor (300) is configured to act as a generator when the electric motor (300) is driven by the hub via the chain (870) during recuperation (Para. [0047] teaches a mode in which the Rear Wheel 802 drives Electric Motor 300 through Spider 202, which is connected to Chain or Belt 870 as discussed in the 103 rejection of claims 26 above; Electric Motor 300 charging a Battery Pack 500- i.e. acting as a generator).
Regarding Claim 34, Hendey further teaches that the freewheel (270) is arranged in a transmission of the drive (Freewheel Coupler 270 being arranged in Drive System 200 as taught in Para. [0043], Drive System 200 considered a transmission in that transmits rotational power from both or either of Electric Motor 300 and Cranks 850L & 850R to Rear Wheel 802 as taught in Paras. [0042]- [0043]).
Claims 30, 35-37, and 39-40 is rejected under 35 U.S.C. 103 as being unpatentable over Hendey and Kinka in view of Honda (DE-10250645-A1) (see the alternate English translation for this document, previously attached as NPL).
Regarding Claim 30, Hendey further teaches a mode in which the electric motor does not provide recuperation (Para. [0049]) but does not teach that a presence and strength of the recuperation is selectable or adjustable by a user.
Honda teaches, in another drive system for a bicycle (Page 2: Para. 10 teaches a motor-assisted bicycle), a recuperation mode wherein a presence of the recuperation is selectable by a user of the bicycle (Page 4: Para. 7 teaches and “eco mode” in which regenerative braking- i.e. recuperation- is carried out, the eco mode being selectable by a user), and wherein a strength of the recuperation is selectable or adjustable by a user (Page 8: Para. 2 teaches that the regenerative braking varies in response to a brake application, which is understood to be applied adjustably by a user).
It would have been obvious to a person of ordinary skill in the art having the teachings of Hendey, Kinka, and Honda in front of them before the effective filing date of the claimed invention, to modify Hendey ‘s bicycle drive system, as modified, such that a recuperation mode was selectable and adjustable by a user as suggested by Honda. A person of ordinary skill in the art would have appreciated the advantage of providing a user with the ability to choose a performance setting for the drive system that would beneficially allow the user to adjust the drive system according to riding conditions.
Regarding Claim 36, Hendey, as modified by Kinka, teaches a bicycle drive system with substantially the same features as the bicycle drive system of claim 23 (see the 103 rejection of claim 23 above for the teachings of Hendey and Kinka), and further teaches:
an electric motor (Electric Motor 300, Fig. 1), and
that the bicycle drive system is configured such that, in a push mode, the electric motor (300) is drivable by the chain (870) driven via the hub (Para. [0047] teaches a mode of use in which the Rear Wheel 802 drives Electric Motor 300 through Spider 202, which is connected to Chain or Belt 870 as discussed in the 103 rejections of claims 26 above) thereby acting as a generator during recuperation and for charging an accumulator (Battery Pack 500, Fig. 1) assigned to the electric motor (Para. [0047] teaches a mode in which the Electric Motor 300 charges a Battery Pack 500, the Battery Pack 500 being configured to provide power to- i.e. is assigned to- Electric Motor 300 as taught in Para. [0032]),
Hendey does not teach that a presence and strength of the recuperation is selectable or adjustable by a user, but Honda does (see the 103 rejection of claim 30above for the teachings of Honda and motivation to combine them with the bicycle/ bicycle drive system of Hendey, as modified).
Regarding Claim 35, Hendey teaches a bicycle (Bicycle 1000, Fig. 5) comprising:
the bicycle drive system according to claim 36 (see the 103 rejection of claim 36 above).
Regarding Claim 37, Hendey further teaches that the hub comprises no freewheel (Para. [0043] teaches that Rear Wheel 802 does not need a freewheel).
Regarding Claim 39, Hendey further teaches that the freewheel (270) is arranged in a transmission of the drive (Freewheel Coupler 270 being arranged in Drive System 200 as taught in Para. [0043], Drive System 200 considered a transmission in that transmits rotational power from both or either of Electric Motor 300 and Cranks 850L & 850R to Rear Wheel 802 as taught in Paras. [0042]- [0043]).
Regarding Claim 40, Hendey further teaches that the freewheel (270) is arranged between the pedal crank (850L & 850R) and the chainring (Paras. [0045]- [0046] teach that the Freewheel Coupler 270 couples or decouples a Spider 202 to the Inner Spindle 245, which is taught there as powered by pedals understood to be connected to Cranks 850L & 850R, the Spider 202 being connected to Sprocket 860 as taught in Para. [0043]).
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Hendey and Kinka in view of Schaeffler (DE-102018121837-A1) (see the alternate English translation for this document, previously attached as NPL).
Regarding Claim 32, Hendey does not teach that the freewheel is arranged in the electric motor of the drive.
Schaeffler teaches, in another bicycle drive system (Abstract), a freewheel arranged in an electric motor of a drive. (Page 3: Para. 5 and Fig. 2 teach a Freewheel 32 having an outer ring that forms a Rotor 34 of a Motor 36 such that the Freewheel 32 is considered to be in the Motor 36).
Schaeffler further teaches that arranging the freewheel as such advantageously allows the material used for the rotor to be reduced and the installation space for the motor can be kept small (Page 3: Para. 5).
It would have been obvious to a person of ordinary skill in the art having the teachings of Hendey, Kinka, and Schaeffler in front of them before the effective filing date of the claimed invention, to modify Hendey ‘s bicycle drive system, as modified, such that the freewheel is arranged in the electric motor of the drive as suggested by Schaeffler. A person of ordinary skill in the art would have appreciated the advantage of being able to reduce both the material used for the rotor and the installation space for the motor, as taught by Schaeffler and discussed above, that would beneficially reduce the weight and bulk of the bicycle drive system.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over Hendey, Kinka, Honda, and Schaeffler.
Regarding Claim 38, Hendey does not teach that the freewheel is arranged in the electric motor of the drive, but Schaeffler does (see the 103 rejection of claim 32 above for the teachings of Schaeffler and motivation to combine them with the bicycle/ bicycle drive system of Hendey, as modified).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYLER JAY STANLEY whose telephone number is (571)272-3329. The examiner can normally be reached Monday- Friday 8:30-5:30 ET.
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/TYLER JAY STANLEY/Examiner, Art Unit 3611 /VALENTIN NEACSU, Ph.D./Supervisory Patent Examiner, Art Unit 3611
