DETAILED ACTION
Election/Restrictions
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 30 December 2025.
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,” which may otherwise be 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 11-14 and 16-20. However, the term “control unit” is not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the application as a whole fails to disclose any corresponding structure for the control unit.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the application as a whole fails to disclose any corresponding structure for the term. Such claim limitation(s) is/are: “memory means” in claims 11, 12 and 16-19.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 11-20 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 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 all pending claims, the disclosure does not provide adequate structure to perform the claimed function of the control unit identifying at least one position and value of stress applied to the rim (no disclosure supporting how the control unit, or disclosed device as a whole, is capable of identifying the location or value of stress applied to the rim; i.e. no force/strain sensors that would be necessary to detect and measure stress at a specific location, nor any support for control functions to locate and/or calculate the claimed stress applied by the rim or tool) or locating the position of the tool relative to the reference point (no disclosure for any sensor/detector for communicating to the control unit where the tool is located relative to the rim, wheel and/or reference point), and thus also lacking support for calculating an angular distance between the position of the stress or the tool and the reference point (due to a lack of ability to locate the point of stress or tool) or ability to verify that the value stress lies within a predetermined range (due to a lack of ability to measure the stress). Additionally, the application as a whole fails to define any corresponding structure for the claimed “control unit” or “memory means”. Although the term “control unit” would be understood to one of ordinary skill in the art to be some form of electronic analyzing device, the application fails to provide any structure of additional programming, algorithm, or other functions that would need to be provided to a controller to function as claimed, and also fails to disclose any specific structure of the memory means or necessary structure to allow the control unit to interact with the memory means.
Regarding claim 12, again due to the fact that the control unit is not understood to be capable of determining the position and value of stress, and also lacking disclosure of how the control unit and memory means communicate with one another, the claimed control unit is not provided with supporting disclosure for storing such information or creating a report having such information.
Regarding claim 19, again due to the fact that the control unit is not understood to be capable of determining the position and value of stress, the application fails to provide support for how the control unit may be capable of keeping the angular distance between the reference point and position of stress within a predetermined range.
Regarding claim 20:
The application also lacks support for how the input/output device is capable of dividing the wheel into a plurality of parts or displaying the plurality of parts of the wheel.
As discussed supra, the claimed device does not have supported structure to determine the location of the tool, and thus is not provided with support for determining a distance between the reference point and the tool.
The application as a whole discloses that the reference point is entered by a user, on the input/output device, as being positioned in one of the plurality of parts of the wheel, which will only provide the control unit with a general area of the reference point, as opposed to a specific point (exact location). Thus, it is further unclear how the control unit may be capable of calculating or detecting the distance between the point of stress or tool, and the reference point, when the control unit is only provided with an area that the point is positioned within (i.e. the distance could only be calculated or detected as a range of distances between the point of stress or tool and any point within the selected plurality of parts that includes the reference point therein).
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 11-20 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.
Regarding claim 11:
It is unclear what structure is intended to be defined by the “control unit” or “memory means”, 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 or memory means. Additionally, the application as a whole fails to clarify how the control unit actually functions to perform the claimed functions (algorithm, comparison to stored data, etc.). For the sake of the current Office Action, the limitation will be considered to define the “control unit” as any electronic or mechanical device that is capable of being programmed to perform the claimed function and the “memory means” as being any electronic or mechanical device that is capable of storing information. While one of ordinary skill in the art may be capable of determining structure that may be used for the respective components, the application does not meet the requirements to “particularly point out and distinctly claim” the subject matter.
As discussed supra, it is unclear how the claimed invention is capable of detecting the position or value of stress applied to the rim or the position of a tool.
Also discussed supra, it is unclear how the control unit is intended to communicate with the memory means or how the detected/calculated values are verified to fall within the predetermined ranges. Again, while one of ordinary skill in the art may be capable of determining structure that may be used for communication between the respective components and functions for verifying the respective values (such as comparing the detected value to the values stored on the memory means), the application does not meet the requirements to “particularly point out and distinctly claim” the subject matter.
Regarding claim 12, as discussed supra, it is unclear how the control unit is capable of storing data that it is not understood to be capable of colleting or how the control unit is capable of creating a report document having such information.
Regarding claims 13-14, it is unclear how the control unit is “operationally connected” to the printer or screen. While one of ordinary skill in the art may be capable of determining structure that may be used for the respective components, the application does not meet the requirements to “particularly point out and distinctly claim” the subject matter.
Regarding claim 15, it is unclear if the claim recites any further structure or function to the previously claimed invention (potentially raising issue under 35 U.S.C. 112d), because the specific structure to which the reference point corresponds would be understood as merely being an intended use of the previously claimed structure, but does not further limit any previously claimed structure or functions.
Regarding claims 17 and 18:
As discussed supra, it is unclear how the claimed control unit communicates with the memory means, which is further made unclear by the claims reciting that the memory means are remote or portable (and assumed to be remote from the control unit).
The terms “for example” in each claim makes it unclear if the applicant is intending to positively claim the respective structure. It is suggested that the applicant remove the last limitation including “for example” from each claim.
Regarding claim 19, it is also unclear how the control unit would perform the claimed controlling function when it is not understood to be capable of determining/calculating the location or value of the stress or location of the tool, as discussed supra.
Regarding claim 20, as discussed supra, it is unclear how the input/output device would be capable of dividing the wheel into a plurality of parts or how the distance is calculated relative to the reference point due to the control unit only being provided with a vague location of the reference point within one of the plurality of parts.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As discussed supra, the claim only provides an intended component of the wheel, of which the claimed invention is intended to be used, as corresponding to the previously claimed reference point, such that the structure and functions of the claimed invention are not further limited by the claim.
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 11-19 are rejected under 35 U.S.C. 103 as being unpatentable over Clasquin et al. (9,073,394).
Regarding claim 11, Clasquin discloses a vehicle wheel maintenance apparatus (100), comprising: a base (102); a rotary support (104/114) mounted on the base and capable of receiving and supporting a rim of a wheel of a vehicle, said rim having at least one reference point (valve stem location; Col. 20, lines 37-44); an electric motor (172), associated with the base, for putting the rotary support into rotation; at least one tool (114, 116, 117) for demounting a tire from the rim or for mounting the tire on the rim; a control unit (120) capable of actuating the electric motor for positioning the wheel in a position in which the at least one reference point on the rim is located at a predetermined distance from the at least one demounting or mounting tool (any location reads on this limitation), said control unit having access to memory means (162); a rotation sensor (176), operationally connected to the control unit, for measuring the position and/or rotation speed and/or acceleration of the electric motor and/or of the rotary support and/or of the wheel (Col. 11, lines 4-9); detector means (Col. 12, lines 27-33, disclosing a load sensor, which may be considered to be equivalent to a torque sensor or Col. 7, lines 11-34 indicate that current sensors or torque, among others, may be used to monitor force, and later indicating that the force may be detected in components of the drive assembly 104, wherein the drive assembly is disclosed as optionally being electrically driven in Col. 2, lines 25-43, such that it would have been obvious to provide a current sensor or torque sensor for the electric motor of the drive system, to detect the forces of the drive unit as disclosed), operationally connected to the control unit, for measuring a resistive torque applied to the electric motor and/or a current draw of the electric motor; the control unit being capable of identifying at least one position, and at least one respective value, of stress applied by the rim and/or by the demounting or mounting tool to the tire (force sensors for tire changing tools, as taught in Col. 7, lines 11-34 will effectively measure force and provide a location where the respective tool meets the tire/wheel), and of calculating an angular distance between the position of the at least one reference point on the rim and the at least one position of stress applied by the rim and/or by the demounting or mounting tool to the tire , characterized in that the control unit is capable of verifying that the angular distance between the position of the at least one reference point on the rim and the at least one position of stress applied by the rim and/or by the demounting or mounting tool to the tire lies within a predetermined range of acceptable distances stored in said memory means (Col. 25, lines 41-49; indicates that the rotation is reversed when the valve stem is determined to be near the tool, which is considered to be equivalent to determining the distance between the reference point and the force applied by the tool and to verify that the distance lies within a predetermined range), and that the at least one respective value of stress applied by the rim and/or by the demounting or mounting tool to the tire lies within a predetermined range of acceptable stress values stored in said memory means (Col. 24, lines 47-56, comparing the tool force to a maximum and deactivating movement if maximum force is applied, is considered to be equivalent to verifying that the value of stress applied by the demounting or mounting tool to the tire lies within a predetermined range of acceptable stress values), and in that the control unit is capable of making the results of said verifications available (by alarm and/or display; Col. 9, lines 59-67).
Regarding claim 12, Clasquin further discloses that the control unit is capable of storing the at least one position, and the at least one respective value, of stress applied by the rim and/or by the demounting or mounting tool to the tire in said memory means (Col. 17, lines 35-67); the control unit also being capable of creating, in said memory means, a report document comprising at least data relating to the at least one position, and the at least one respective value, of stress applied by the rim and/or by the demounting or mounting tool to the tire, and of sharing said report document (the storage of the data relating to the force and position will effectively form a report document, with no other specifics disclosed for the report document)
Regarding claim 13, Clasquin further discloses that the control unit is operationally connected to a computer via internet or LAN connections (Col. 20, lines 8-21), wherein it would have been obvious that any computer being connected to a Lan network or internet would also obviously be capable of connection to a printer in order to print the data collected by the control unit, including results of said verifications.
Regarding claim 14, Clasquin further discloses that the control unit is operationally connected to a screen in order to display the results of said verifications (Col. 9, lines 63-67; display considered to be equivalent to a screen).
Regarding claim 15, Clasquin further discloses that the at least one reference point on the rim comprises an inflation valve or a TPMS sensor (Col. 25, lines 41-57).
Regarding claim 16, Clasquin further discloses that the memory means accessible by the control unit are at least partially located in the vehicle wheel maintenance apparatus (Col. 8, lines 47-58 indicates that the controller may be positioned within the control unit 120, which is part of the vehicle wheel maintenance apparatus, and that the control unit includes the memory 162).
Regarding claims 17 and 18, Clasquin further discloses that the memory means accessible by the control unit are at least partially located in a remote computer system (Col. 20, lines 9-21), wherein nearly any current computer would be considered to be a portable device (capable of being transported).
Regarding claim 19, Clasquin further discloses that the control unit is capable of controlling the vehicle wheel maintenance apparatus automatically, so as to keep the angular distance between the position of the at least one reference point on the rim and the at least one position, and the at least one respective value, of stress applied by the rim and/or by the demounting or mounting tool to the tire within respective predetermined ranges of acceptable distances and acceptable values of stress stored in said memory means (similar to the functions discussed for claim 11, disclosed in Col. 24, lines 47-56 and Col. 25, lines 41-49, with Col. 17, line 58-Col. 18, line 2 indicating that the functions may be carried out without human assistance, which is equivalent to automatic control).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Clasquin et al. (9,073,394) as applied to claim 11 and in view of Sotgui (DE 1020200134524 A1).
Clasquin discloses the apparatus, as discussed supra, comprising an input/output device (display 124 and input device 126). However, Clasquin fails to disclose that the input/output device is capable of graphically displaying the wheel with the wheel divided into a plurality of parts. Sotgui discloses a similar vehicle wheel maintenance apparatus, also having sensor for detecting torque and rotational position of the wheel, with a focus on preventing the TPMS sensor from contacting the tools of the machine, and Sotgui teaches that an input/output device is capable of graphically displaying the wheel with the wheel divided into a plurality of parts the input/output device being operable by an operator for the purpose of selecting a part, from among the plurality of parts into which the wheel is divided, to be associated with the position of the at least one reference point (TPMS location) on the rim (English Language translation, last paragraph on Pg. 3, through fourth paragraph on Pg. 4), and also teaching that relying on manual input may allow for human error (lower half of Pg. 2) and indicating that the graphical division of a wheel will make it easier for a user to provide an approximate location of the TPMS sensor (third paragraph on Pg. 9), which would be understood to allow the automatic operation to more consistently avoid contact with the sensor (due to avoidance of the larger area, as opposed to a specific point that may be inaccurately input by a user). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to configure the control unit and input/output devices of Clasquin with the ability to graphically display the wheel with the wheel divided into a plurality of parts, as taught by Sotgui to allow for more general location of the reference point to overcome user error, wherein the control unit of Clasquin would also be modified to be capable of calculating the predetermined distance of the at least one reference point on the rim from the at least one demounting or mounting tool, as the distance of the at least one demounting or mounting tool from a point belonging to the part associated with the position of the at least one reference point on the rim, in the same manner taught by Sotgui.
Conclusion
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.
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, Brian Keller can be reached at 571-272-8548. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRYAN R MULLER/Primary Examiner, Art Unit 3723 21 January 2026