DETAILED ACTION
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 .
Status of Claims
This office action is in response to the amendments/remarks filed on 05/26/2026. Claims 1-8, 15-16, 19 are pending; claims 9-14, 17-18 are canceled; claims 7-8, 16 are withdrawn; claims 1-6, 15, 19 will be examined.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/26/2026 has been entered.
Drawings
The drawings are objected to under 37 CFR 1.83(a) because they fail to show “first one-way clutch” as described ¶[0043]-USPGPUB version in the specification. Any structural detail that is essential for a proper understanding of the disclosed invention should be shown in the drawing. MPEP § 608.02(d).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-6, 15, 19 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.
Claim 1 recites “an electronic controller configured to control the motor so as to drive the transmission body without propelling the human-powered vehicle with the driving force of the motor upon the user operating the first operating unit.” The specification does not enable the limitation of “the motor transmitting a force to the transmission body without propelling a human powered vehicle”, the disclosure provides no structural feature by which the controller achieve the claimed result. The recitation lacks corresponding enabling disclosure in view of Wands factors: 1-quantity of experimentation needed: the specification ¶[0057] of PGPUB version expressly discloses motor 22 configure to apply propulsion force to human power vehicle and ¶[0059] of PGPUB version: “motor 22 can be configured to transmit a rotational force to the transmission body 20 without using the first rotational body 14. In an example in which the motor 22 is configured to transmit rotational force to the transmission body 20 without using the first rotational body 14, a sprocket that engages the transmission body 20 is provided on an output shaft 22A of the motor 22 or a transmission member to which the force from the output shaft 22A of the motor 22 is transmitted.” but fails to identify mechanical arrangement to achieve the claimed functionality; 2-the amount of direction provided by the inventor: the specification discloses controller that selects a non-propulsive operating mode (Fig.6, s25) but it does not have any guidance beyond how the controller implementation that the motor is controlled to achieve and maintain that operating state; 3-state of prior art: while controllers for motors and transmission are known, the specific operation recited “driving the transmission body without propelling the human-powered vehicle” is not conventional and thus cannot be implement without more detailed instructions provided by the inventor.
The dependent claims are also rejected due to their dependency from claim 1.
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 1-6, 15, 19 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.
Claim 1 recites “an electronic controller configured to control the motor so as to drive the transmission body without propelling the human-powered vehicle with the driving force of the motor upon the user operating the first operating unit.” The limitation is indefinite because it is unclear how a motor would be able to accomplish the claimed function.
The dependent claims are also rejected due to their dependency from claim 1.
Response to Oath/Declaration
Applicant’s arguments and declaration submitted under 37 CFR 1.132 on 4/16/2026 have been fully considered but are not persuasive for the following reasons:
Claim 1 recites “an electronic controller configured to control the motor so as to drive the transmission body without propelling the human-powered vehicle with the driving force of the motor upon the user operating the first operating unit.” While applicant explains that three one-way clutches that permit relative rotation under certain operating conditions (see paragraph 6); however, the declaration discusses on the wrong one-way clutches. The second and third OWC ensure the pedal do not rotate. They do not prevent the rear wheel from being driven. However, the first OWC (not shown), engages and causes propulsion when motor rotates the rear sprocket faster than the rear wheel.
Secondly, paragraph 7, “So long as the rear wheel 16R is rotating, there exists a threshold speed below which the transmission body 20 (chain) and the second rotational body 18 (rear sprocket) can be rotated without engaging the first one-way clutch and driving the rear wheel 16R.”; and “an appropriate range of drive speeds for the motor 22 can easily be ascertained based on the rotational speed of the rear wheel 16R and the gear ratio between the motor 22 and the second rotational body 18 (rear sprocket).” This statement appears to add new technical details (e.g. “threshold speed below the transmission body” and “range of drive speeds for motor 22”) which were not in the original specification. The original specification does not disclose such control method, calculation, or feedback relationship. The specification does not describe controlling motor based upon rear wheel rotational speed, determining a target motor speed as a function of gear ratio, or maintain the first one-way clutch in overrunning state through controller operation.
Applicant argues that “without using the first rotational body” limitation is optional, so the specification does not need to enable it (see paragraph 8) is persuasive because claim 1 does not require this optional arrangement. However, the claim does not exclude stationary use. Applicant asserts that “the only other requirement is to control motor to drive transmission body at speed below the threshold speed” however, the original specification does not disclose threshold speed, or how controller determine calculate or maintain the motor speed relative to the rotational speed of rear wheel. Applicant’s explanation regarding “threshold speed” and control based on rear wheel speed and gear ratio appears on declaration and is not described in the original specification. Thereof, applicant’s arguments; specifically, paragraph 8-9 do not demonstrate that the original disclosure reasonably enable the full scope of claim 1.
Applicant’s arguments and declaration submitted under 37 CFR 1.132 on 5/26/2026 have been fully considered but are not persuasive for the following reasons:
Regarding paragraph 6 from the declaration, applicant cites “see https://www.lily-bearing.com/resources/blog/understanding- sprocket-tooth-count-how-it-affects-speed-torque-and-chain-life)” however, this website explains the standard relationship for power transmission: smaller front sprocket and larger rear sprocket multiply torque to drive the load. This does not address drive the rear sprocket (second rotational body) without propelling the human- powered vehicle. Secondly, applicant says the formula is similar to equation 1 from the specification, however, equation 1 is transmission ratio. The website uses ratio formula: Front Sprocket RPM = Rear Sprocket RPM (Rear Sprocket Teeth/ Front Sprocket Teeth). This calculates the output speed when power is being transmitted, it does not calculate threshold speed.
Regarding paragraph 7 from the declaration, examiner agrees that when the rear sprocket is engaged with the rear wheel due to pedaling the rotational speed of the rear wheel and the rotational speed of the rear sprocket will be the same but the claim is about not propelling. However, it is not the condition recited in claim 1. Claim 1 requires “an electronic controller configured to control the motor so as to drive the transmission body without propelling the human-powered vehicle”. This means when the motor is driving the chain without propulsion, the rear wheel is not being driven by transmission body which necessarily requires the first owc to be in its overrunning (disengaged) state rather than its engaged state. Thus, the declaration explains rear sprocket is engaged with the rear wheel condition which is the owc is engaged which is the opposite of what required by the claim. Furthermore, the declaration asserts that the threshold speed can be determined based on the rotational speed of rear wheel. However, the specification describes speed detector detects the wheel speed, not sprocket speed. Logically, when the first owc is opened/disengaged, the rear sprocket is no longer rotationally coupled to the rear wheel. Consequently, the rotational speed of the rear sprocket is not necessarily the same to rotational speed of the rear wheel. Moreover, the specification does not describe using speed detector to determine a threshold motor speed or limiting motor output based on such threshold while the first operating unit is operated. These control relationship and calculations are not described in the original specification.
Regarding paragraph 8 from the declaration, the specification discloses transmission ratio r=w/c, and there is no disclosure of rear sprocket rpm, number of teeth of front and rear sprocket, threshold, limit or target speed for the motor so it is not clear how one skill in the art would able to obtain threshold motor speed. Even using the formula from website in paragraph 6, the formula assumes the drivetrain is engaged and transmitted power. It calculates base on input and output when clutch is locked but the claim requires without propelling the vehicle which means the clutch is opened. The formula cannot apply because in this case the sprocket speed and wheel speed are independent of each other.
Regarding paragraph 9 from the declaration, examiner agrees with the general principle of bicycle operation as explained by applicant. However, the coasting analysis describes the engagement threshold not disengagement threshold required by the claim. Secondly, claim 1 recites “an electronic controller configured to control the motor so as to drive the transmission body without propelling the human-powered vehicle with the driving force of the motor upon the user operating the first operating unit.” The claim is directed to controller configured to control the motor so as to drive the chain/transmission body without propelling the human powered vehicle. The original specification does not disclose determining a threshold front sprocket rotation speed, controlling the motor to remain below such threshold while the first operating unit is operated. Furthermore, the declaration does not address where in the original specification discloses the controller logic, or motor control method for performing this function required in claim 1.
Regarding paragraph 10 from the declaration, applicant asserts that the motor can be controlled to drive the transmission body without propelling the human powered vehicle by maintain the motor speed below threshold front sprocket rpm, and further states that the threshold front sprocket rpm can be readily determined from the rotational speed of the rear wheel and gear ratio. These explanation are not in the original specification. Although the specification discloses a vehicle speed detector detects the rotational speed of rear wheel and discloses the gear transmission between the motor and transmission body, the specification does not describe determine a threshold front sprocket rotational speed, calculate such threshold based on detected rear wheel speed and gear ratio, or controlling the motor to maintain below the threshold while first operating unit operates. Furthermore, the specification discloses speed detector detects the rear wheel rotational speed and not the rotational speed of rear sprocket. When the first one-way clutch is disengaged, the rear sprocket is not coupled to rear wheel. Lastly, the declaration’s conclusion that the threshold front sprocket rpm can be determined from detected rear wheel speed is not disclosed in original disclosure.
Regarding paragraph 11 from the declaration has been considered but are not persuasive to overcome the 112 (b) because the declaration does not identify boundaries for determining when the controller is controlling the motor to drive transmission body without propelling the human power vehicle.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lillian T Nguyen whose telephone number is (571)270-5404. The examiner can normally be reached Monday-Friday, 8:30am-5pm.
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/LILLIAN T NGUYEN/Examiner, Art Unit 3655A
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