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 Arguments
Applicant’s arguments filed after the close of prosecution on 10/8/2026 with respect to rejections under 35 USC 103 have been fully considered and are persuasive. The previous rejection has been withdrawn. Examiner has reopened prosecution under a new grounds of rejection in view of US20240190533A1 (“Hahn”), which fully exemplifies the SRAM AXS Eagle and e-bike motor group set.
Applicant’s arguments in regards to the interpretation under 35 USC 112(f) are not persuasive. Interpretation can be invoked despite not using the word “means” 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.
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.
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,” but are nonetheless being 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:
Claim 1: “first communicator” ([0044], hardware device(s))
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend 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 avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (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) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 102
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US20240190533A1 (“Hahn”).
Claim 1:
A shifting device for a human-powered vehicle, the shifting device comprising: a transmission device configured to shift a transmission ratio of the human-powered vehicle; a first controller configured to control the transmission device; and a first communicator configured to perform communication with a drive unit of the human-powered vehicle including a motor configured to apply a propulsion force to the human- powered vehicle, the first controller being further configured to control the first communicator so that the first communicator sends first information to the drive unit prior to sending a shifting initiation signal to the transmission device in a case where the first controller shifts the transmission ratio, the first information including at least one of information related to a shifting time of the transmission ratio and information related to a shifting period of the transmission ratio, the first information including a predetermined period for controlling the motor, the predetermined period being specified based on a rotational amount of a rotational body or crank axle. (Hahn at least the abstract, [0119]: “shifter buttons”, [0076]: “A bicycle with an electric pedal assist motor capable of driving a chainring independent of cranks is provided. The bicycle includes wheel speed sensors and crank cadence sensors. The wheel speed sensors and the crank cadence sensors measure wheel speed and crank cadence, respectively, and provide the measured wheel speed and crank cadence to an electric rear derailleur or a controller of the bicycle. The electric rear derailleur, for example, is configured to instruct an e-bike controller to activate motor overdrive based on the measured wheel speed and/or the measured crank cadence.”, [0144]: “A crank cadence, angular position, or angular velocity sensor may be used to delay, and/or otherwise time, the start of the shifting motion in order to cause the shift to execute in a desirable crank arm location for appropriate rider input torque”, [0147]: “ coasting, the derailleur shifts through gears to match changing wheel speed so that when the rider resumes pedaling, the rider is in a desirable gear. ”)
Claim 2:
a second communicator configured to receive a shifting signal for shifting the transmission ratio from a shift-operating unit, the first controller being configured to control the first communicator so that the first communicator sends the first information to the drive unit in a case where the second communicator receives the shifting signal. (Hahn at least [0077]: “controller or another controller of the bicycle may switch between two or more of the different ride modes. Within each of the different ride modes, characteristics of the shifting such as, for example, gear hysteresis, a minimum gear to shift to without pedaling, and/or other characteristics may be adjusted”, [0091]: “wheel speed sensor 306 and/or the pedal speed sensor 304 may be in direct communication with the rear derailleur 102 and indirect communication with the with the e-bike controller 302 via the rear derailleur ”)
Claim 3:
the second communicator is configured to receive the shifting signal through wireless communication. (Hahn at least [0118])
Claim 4:
the first controller is configured to control the transmission device so that the transmission device initiates shifting of the transmission ratio at an initiation time after the predetermined period elapses in a case where the shifting signal is received; and the first information includes at least one of the initiation time. (Hahn at least [0114])
Claim 5:
the first controller is configured to determine at least one of the shifting time and the shifting period in accordance with at least one of the transmission ratio prior to shifting and the transmission ratio subsequent to shifting. (Hahn at least [0134])
Claim 6:
the first controller is configured to control the transmission device in accordance with a shifting signal sent from the drive unit. (Hahn at least [0056]aHasdf)
Claim 7:
a communication housing provided with the first communicator and formed separately from the transmission device. (Hahn at least [0086], [0099]a)
Claim 8:
the first communicator is configured to send the first information to the drive unit through wired communication. (Hahn at least [0080-0083])
Claim 9:
electric power is supplied from the drive unit. (Hahn at least [0098]) *Examiner’s note: here the battery can be considered a part of the drive unit
Claim 10:
the transmission device includes a derailleur. (Hahn at least [0076])
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to OLIVER TAN whose telephone number is (703)756-4728. The examiner can normally be reached M-F 10-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Navid Mehdizadeh can be reached at (571) 272-7691. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/O.T./Examiner, Art Unit 3669
/NAVID Z. MEHDIZADEH/Supervisory Patent Examiner, Art Unit 3669
