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 amendments filed February 18, 2026 have been entered. Accordingly, claims 1-18 are currently pending and have been examined. The examiner acknowledges the amendments of claim 17. Claims 4-5 and 10-12 are withdrawn. The previous 112 rejection has been withdrawn due to applicant amendments. The previous claim interoperation, 102 rejections, and 103 rejections are maintained. For the reason(s) set forth below, applicant’s arguments have not been found persuasive. The action is Final.
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 1-3 and 14-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Meng (CN 112405438).
Regarding claim 1, Meng discloses: a tool (Figures 1-4 element 100 and see also paragraph 0039) for transferring a motor vehicle into a rollable state despite a parking lock having been activated (Applicant is reminded, a claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim (See MPEP 2114 (II)), comprising:
a base (element 113) which is fastenable to a vehicle wheel of the motor vehicle (The examiner indicates that the motor vehicle and any associated structure (vehicle wheel) has not been positively recited as part of the claimed invention (tool). Therefore, giving that the prior art discloses the tool comprising the base (element 113) fasten to a wheel hub (element 1000), and giving that there is no additional structure or structural difference, thus the prior art would be capable of having the base fastenable to the vehicle wheel of the motor vehicle, as recited.);
an actuating element (element 2) which is displaceable along a sliding direction relative to the base (see paragraph 0039 where the prior art discloses element 2 (actuating element) “is movably mounted on the fixture body along its axial direction”, thus being displaceable along a sliding direction (axial direction) relative to the base (element 113)) and via which, in a state of the base fastened to the vehicle wheel, by displacement of the actuating element along the sliding direction relative to the base, a toothing engagement between a first toothing of a propeller shaft of the motor vehicle and a second toothing of a wheel hub can be undone such that the motor vehicle is transferable into the rollable state (The examiner indicates that the motor vehicle and any associated structure (vehicle wheel, a toothing engagement between a first toothing of a propeller shaft and a second toothing of a wheel hub) has not been positively recited as part of the claimed invention (tool). Furthermore, the prior art shows the base (element 113) fasten to the wheel hub (element 1000) in figure 1 and discloses in paragraph 0040 that element 2 (actuating element) being positioned relative to a shaft (element 200) and moving toward to abut against the end of the shaft in order to disassemble engagement between the shaft and wheel hub bearing unit (element 1000), and giving that there is no additional structure or structural difference, thus the prior art would be capable of having in the state of the base fastened to the vehicle wheel, by displacement of the actuating element along the sliding direction relative to the base, a toothing engagement between a first toothing of a propeller shaft of the motor vehicle and a second toothing of a wheel hub can be undone such that the motor vehicle is transferable into the rollable state, as recited.); and
a travel limiting device (element 114), wherein a travel by which the actuating element is displaceable at most relative to the base in order to undo the toothing engagement is specifiable by the travel limiting device (See paragraph 0039 where the prior art discloses element 2 (actuating element) “is movably mounted on the fixture body along its axial direction”, see also see figure 2 annotated below showing the actuating element (element 2) moved within a mounting hole (element 111 and see also paragraph 0042) with the actuating element having an outer ring surface (Detail A) being larger than the stem portion of the actuating element (element 2) and the travel limiting device (element 114) having a top surface (Detail B) being larger than the stem portion of the actuating element and matching the diameter of outer ring surface (Detail A), thus when element 2 (actuating element) travels along the axial direction relative to the base (element 113) the outer ring surface (Detail A) portion will abut the top surface of the travel limiting device (element 114) and therefore limit the travel in the axial direction. Thus, the travel limiting device is capable of having the travel by which the actuating element is displaceable at most relative to the base in order to undo the toothing engagement is specifiable by the travel limiting device, as recited.).
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Regarding claim 2, Meng discloses: the tool according to claim 1, wherein the base has a screw-in element (elements 3/12) which is screwable to a thread, wherein the vehicle wheel is fastenable to the wheel hub by the thread, to fasten the base to the vehicle wheel (See paragraph 0044 where the prior art discloses element 12 having “threads” that that are connected to the threads of the screw (element 1000a) in order to fasten the base with the wheel hub (element 1000), and giving that there is no additional structure or structural difference, thus the prior art would be capable of having wherein the vehicle wheel is fastenable to the wheel hub by the thread, to fasten the base to the vehicle wheel, as recited.).
Regarding claim 3, Meng discloses: the tool according to claim 1, wherein the actuating element has a screw element (Per applicant’s disclosure on paragraph 0072, a screw element is interpreted to be “As can be seen particularly readily from Figs1, 2, 6 and 7, the actuating element 10 has a screw element which is in the form here of a threaded rod”, similarly the prior art discloses in paragraph 0042 element 2 (actuating element) provided with “external threads”, thus having a screw element) which is screwable to a thread of the propeller shaft and wherein the thread secures the toothing engagement (The examiner indicates that the motor vehicle and any associated structure (thread of the propeller shaft and toothing engagement) has not been positively recited as part of the claimed invention (tool). Giving that there is no additional structure or structural difference, thus the prior art would be capable of having the screw element be capable of being screwable to the thread of the propeller shaft and wherein the thread secures the toothing engagement, as recited.).
Regarding claim 14, Meng discloses: the tool according to claim 1, wherein the base has a supporting region (see annotated figure 2 below Detail A) via which the base is supportable on a wheel suspension of the motor vehicle (The examiner indicates that the motor vehicle and any associated structure (wheel suspension) has not been positively recited as part of the claimed invention (tool). Giving that there is no additional structure or structural difference, thus the prior art would be capable of having the base having the supporting region via which the base is supportable on a wheel suspension of the motor vehicle, as recited.).
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Regarding claim 15, Meng discloses: the tool according to claim 1, wherein the base, in the state fastened to the vehicle wheel, is supported in a radial direction on the wheel hub or on a rim of the vehicle wheel (The examiner indicates that the motor vehicle and any associated structure (wheel hub and rim of the vehicle wheel) has not been positively recited as part of the claimed invention (tool). Giving that there is no additional structure or structural difference, thus the prior art would be capable of having the base, in the state fastened to the vehicle wheel, is supported in a radial direction on the wheel hub or on a rim of the vehicle wheel, as recited.).
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.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Meng (CN 112405438) in view of Klann (US Pub. No. 2004/0088844).
Regarding claim 13, Meng discloses all the limitations as stated in the rejection of claim 1, but appears to be silent wherein the base has a plastics element via which the base is supportable on the vehicle wheel.
Klann is concern in providing a tool (Figures 5-30 and see also paragraph 0064) comprising a base (elements 20/50), an actuating cylinder (element 40 and see also figures 23-24), and wherein the base has a plastics element (element 115 and see also paragraph 0108 where the prior art discloses element 115 as “a plastic ring”)via which the base is supportable on the vehicle wheel (The examiner indicates that the motor vehicle and any associated structure (vehicle wheel) has not been positively recited as part of the claimed invention (tool). Furthermore, see figure 23-24 showing element 50 (portion of base) supportable on a workpiece (element 88), and see paragraph 0108 where the prior art discloses element 115 attached to element 50 on the underside, thus would necessarily being supportable on the workpiece. Giving that there is no additional structure or structural difference, thus the prior art would be capable of having the plastic element which the base is supportable on the vehicle wheel, as recited.).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Meng to incorporate the teachings of Klann to provide wherein the base has a plastics element via which the base is supportable on the vehicle wheel. One of ordinary skill in the art would recognize that having a plastic element on the base would necessarily protect the area as disclosed by Klann (see paragraph 0108).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Meng (CN 112405438) in view of Maddalena (US Patent No. 4,989,312).
Regarding claim 16, Meng discloses all the limitations as stated in the rejection of claims 1 and 13, but appears to be silent further comprising a securing element, wherein the securing element secures a screw connection, which is formed by the screw element screwed into the thread of the propeller shaft, against release of the screw connection.
Maddalena is concern in providing a tool (Figures 2 and 5-6 element 10) comprising a base (element 12), an actuating element (element 40) which is displaceable along a sliding direction (up-down arrow in figure 2) relative to the base, wherein the actuating element has a screw element (Per applicant’s disclosure on paragraph 0072, a screw element is interpreted to be “As can be seen particularly readily from Figs1, 2, 6 and 7, the actuating element 10 has a screw element which is in the form here of a threaded rod”, similarly the prior art discloses in col. 4, ll. 11 element 40 (actuating element) having “threads” (element 42), thus having a screw element) and silent further comprising a securing element (element 46), wherein the securing element secures a screw connection, which is formed by the screw element screwed into the thread of the propeller shaft, against release of the screw connection (The examiner indicates that the motor vehicle and any associated structure (thread of the propeller shaft) has not been positively recited as part of the claimed invention (tool). Furthermore, the prior art discloses in col. 4, ll. 27-28 that element 46 (securing element) comprises “internal threads” (element 48) and see also see figure 5-6 showing the securing element (element 46) securing a screw connection formed by the screw element (element 42) into the tread of a shaft (element 62). Giving that there is no additional structure or structural difference, thus the prior art would be capable of having wherein the securing element secures a screw connection, which is formed by the screw element screwed into the thread of the propeller shaft, against release of the screw connection, as recited.).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Meng to incorporate the teachings of Maddalena to provide a securing element, wherein the securing element secures a screw connection, which is formed by the screw element screwed into the thread of the propeller shaft, against release of the screw connection. One of ordinary skill in the art would recognize that having a known screw connection between two components via the securing element would necessarily provide the predictable result of providing additional securement between both components in order to prevent accidental slippage and damages during operations.
Allowable Subject Matter
Claims 6-9 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 17 is allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 6 (claims 7-9 depend on claim 6) recites the limitation of the tool, specifically “wherein the travel limiting device has an axial securing element which is supportable along the sliding direction at least indirectly on the base and which is adjustable between: a release state, in which the axial securing element is displaceable along the sliding direction relative to the actuating element; and a blocking state, in which relative movements along the sliding direction between the axial securing element and the actuating element are prevented such that, in the blocking state, the axial securing element is displaceable with the actuating element along the sliding direction relative to the base”.
The prior art of Meng discloses the tool (Figures 1-4 element 100) comprising actuating element (element 2) which is displaceable along a sliding direction relative to the base and the travel being specifiable by the travel limiting device (element 114). However, the travel limiting device is directly supported on the base (see figure 3) and therefore does not disclose the travel limiting device has an axial securing element which is supportable along the sliding direction at least indirectly on the base and which is adjustable between: a release state and blocking state.
Claim 18 recites the limitation of a method comprising the step of using the tool according to claim 1 to bring a motor vehicle into a rollable state despite a parking lock of the motor vehicle having been activated by the tool.
The prior art of Meng discloses the tool and claim limitation of claim 1 (see rejection above on pages 11-14) and further discloses utilizing the tool to disengage a drive shaft from a hub bearing unit (see paragraph 0052), thus the prior art does not disclose the step to bring a motor vehicle into a rollable state despite a parking lock of the motor vehicle having been activated by the tool.
Claim 17 recites the limitation of a motor vehicle in combination with a tool, specifically wherein the motor vehicle comprises a propeller shaft with a first toothing, a wheel hub with a second toothing, and a toothing engagement between the first toothing of the propeller shaft of the motor vehicle and the second toothing of the wheel hub can be undone.
The prior art of Meng discloses the tool and claim limitation of claim 1 (see rejection above on pages 11-14) and further discloses utilizing the tool to disengage a drive shaft from a hub bearing unit (see paragraph 0052), thus the prior art does not disclose wherein the motor vehicle comprises a propeller shaft with a first toothing, a wheel hub with a second toothing, and a toothing engagement between the first toothing of the propeller shaft of the motor vehicle and the second toothing of the wheel hub can be undone.
Response to Arguments
Applicant's arguments filed 02/18/2026 have been fully considered but they are not persuasive.
On pages 7-8 of the “Remarks”, the applicant argues that independent claim 1, specifically:
Regarding independent claim 1, Applicant respectfully submits that independent claim 1 claims a tool for transferring a motor vehicle into a rollable state despite a parking lock having been activated. As the Examiner acknowledges, Meng discloses a tool to disengage a drive shaft from a hub bearing unit. As such, Applicant respectfully submits that independent claim 1 distinguishes over Meng.
Applicant respectfully submits that even though this limitation is included in the preamble of the claim, this limitation must be accorded patentable weight by the Examiner. As discussed in M.P.E.P. 2111.02, citing Catalina Mktg. Int'l v. Coolsavings.com, Inc., "[C]lear reliance on the preamble during prosecution to distinguish the claimed invention from the prior art transforms the preamble into a claim limitation because such reliance indicates use of the preamble to define, in part, the claimed invention...".
Further, Applicant respectfully submits that the functional limitations of independent claim 1 must also be accorded patentable weight, even though the motor vehicle and its associated elements are not positively recited. It is the functional features of Applicant's claimed tool with respect to the motor vehicle that are claimed, and Men's tool does not disclose Applicant's claimed tool functionalities.
Applicant respectfully submits that functional limitations must be provided patentable weight in a claim and must be disclosed in the prior art to render a claim unpatentable in view of the prior art.
As stated in M.P.E.P.1[ 2173.05(g), "[a] claim term is functional when it recites a feature 'by what it does rather than by what it is' (e.g., as evidenced by its specific structure or specific ingredients). There is nothing inherently wrong with defining some part of an invention in functional terms. Functional language does not, in and of itself, render a claim improper. Inre Swinehart, 439 F.2d 210, 212, 169 USPQ 226, 229 (CCPA 1971)."
As further stated in M.P.E.P.2173.05(g), "[a] functional limitation must be evaluated and considered, just like any other limitation of the claim, for what it fairly conveys to a person of ordinary skill in the pertinent art in the context in which it is used." (emphasis added). "A functional limitation is often used in association with an element, ingredient, or step of a process to define a particular capability or purpose that is served by the recited element, ingredient or step." Id.
Further regarding functional limitations, M.P.E.P. 2114.I provides that "[f]eatures of an apparatus may be recited either structurally or functionally. In re Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997)." M.P.E.P. 2114.I. further states that "[i]f an examiner concludes that a functional limitation is an inherent characteristic of the prior art, then to establish a prima [facie] case of anticipation or obviousness, the examiner should explain that the prior art structure inherently possesses the functionally defined limitations of the claimed apparatus."
Therefore, Applicant respectfully submits that Applicant's functional limitations in independent claim 1 must be evaluated and considered just like any other limitation of the claim, and that, Meng does not disclose Applicant's tool's functional limitations.
The examiner respectfully disagrees. The examiner notes, that the functional limitations of claim have been acknowledge and evaluated in the rejection above. In response to applicant's argument that the tool being used “for transferring a motor vehicle into a rollable state despite a parking lock having been activated”, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
As disclosed in the rejection of claim 1 above, the prior art of Meng discloses a tool (Figures 1-4 element 100 and see also paragraph 0039) comprising a base (element 113) which is fastenable to a wheel component (i.e. wheel hub (element 1000)), an actuating element (element 2) which is displaceable along a sliding direction relative to the base (see paragraph 0039 where the prior art discloses element 2 (actuating element) “is movably mounted on the fixture body along its axial direction”, thus being displaceable along a sliding direction (axial direction) relative to the base (element 113)), and a travel limiting device (element 114). Thus, disclosing the structure of the tool and meeting the claim limitation. Furthermore, the claim does not provide any additional structure or structural difference of the tool that would necessarily preclude the prior art from performing the claimed functions. Thus, arguments have been found unpersuasive.
On page 9 of the “Remarks”, the applicant argues claim limitations interpreted by the examiner under 35 U.S.C. 112(f) should not be interpreted as such. The applicant argues:
As provided in M.P.E.P. 2181.I.A, 35 U.S.C. 112(f) will not apply if
persons of ordinary skill in the art reading the specification understand the term to have a sufficiently definite meaning as the name for the structure that performs the function, even when the term covers a broad class of structures or identifies the structures by their function (e.g., "filters," "brakes," "clamp," "screwdriver," and “locks”).
The examiner respectfully disagrees. The terms element and device have been determined to be generic placeholder (a term that is simply a substitute for the term "means") since there is no structural specific meaning (for example, the securing element may be identified as a nut, or clamp, etc.). Secondly, the terms are modified by functional language (securing element secures a screw connection). Lastly, there is no modification by sufficient structure, material, or acts for performing the claimed function (there is no known additional structure in the claim that performed the claimed function). Thus, arguments have been found unpersuasive and the claim interpretation 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 ALBERTO SAENZ whose telephone number is (313)446-6610. The examiner can normally be reached Monday-Friday 7:30-4:30PM EST.
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/A.S./Examiner, Art Unit 3723
/ORLANDO E AVILES/Supervisory Patent Examiner, Art Unit 3736