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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-8 and 16-20, in the reply filed on 8/18/2025 was previously acknowledged (see Office action mailed 9/5/2025). Claims 9-15 remain withdrawn.
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.
Independent claims 1 and 16 (from which all other claims depend) set forth limitations that meet the three-prong test set forth in MPEP § 2181 (I) and will be interpreted under 35 U.S.C. 112(f).
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 limitations use the generic placeholder “one or more controllers including executable instructions” (line 6 of claim 1, line 5 of claim 16) that is coupled with functional language (functions throughout last paragraph of claim 1, functions throughout last paragraph of claim 16) without claiming sufficient algorithm to perform the recited functions.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they must be interpreted to be limited by the corresponding algorithms described in the specification as performing the claimed functions. However, as detailed in the 35 U.S.C. 112(a) and 112(b) rejections elsewhere below, it is unclear precisely what the full broad scope of the claims is to encompass such that it is similarly unclear precisely which disclosed/unclaimed algorithms from the written description are to be limiting of the claims.
If applicant does not intend to have the claims interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by expressly claiming sufficient algorithm to perform the claimed functions); or (2) present a sufficient showing that the claim limitations already recite sufficient algorithm to perform the claimed functions so as to avoid them being interpreted under 35 U.S.C. 112(f); or (3) delete the functional limitations from the claims.
Claim Rejections - 35 USC § 112(a)
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.
Claims 1-3, 6-8 and 16-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, applicant has not established possession of the full broad scope of the limitation “one or more controllers including executable instructions that cause the one or more controllers to command the shifter actuator to engage a dog clutch in response to a phase angle between two tone wheel angles of the three tone wheels being less than or equal to a minimum phase angle plus an angular backlash amount or greater than or equal to the minimum phase angle minus the angular backlash amount” (claim 1) since the limitation is set forth without bound as to what elements are to define the claimed “minimum phase angle” and “angular backlash amount” and in what manner, e.g., a minimum phase angle or backlash of a throttle pedal, of a steering mechanism, of gears, of clutches, of a brake lever, of a transmission shift lever, of a camshaft, or some other elements, etc. Due to this lack of specificity in the claim, the algorithms set forth in the written description are not sufficient to perform the broad scope of the claimed functions.
See MPEP 2163(II)(A)(3)(a)(ii), which states the following in various parts:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice… reduction to drawings… or by disclosure of relevant, identifying characteristics… sufficient to show the inventor was in possession of the claimed genus…”
“[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention…”
“[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification…”
“A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus…”
“A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when… Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss…”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 merely by clearly describing one embodiment of the thing claimed… The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed…”
See MPEP 2181 II B, which states the following in various parts:
“An algorithm is defined, for example, as ‘a finite sequence of steps for solving a logical or mathematical problem or performing a task… Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure”
“the understanding of one skilled in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus-function claim terms… A patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function… [C]onsideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification”
“The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps… language that simply describes the function to be performed describes an outcome, not a means for achieving that outcome… implicit or inherent disclosure of a class of algorithms for performing the claimed functions is not sufficient, and the purported "one-step" algorithm is not an algorithm at all”
“[t]he fact that an ordinarily skilled artisan might be able to design a program to create an access control list based on the system users' predetermined roles goes to enablement whereas the question before us is whether the specification contains a sufficiently precise description of the ‘corresponding structure' to satisfy [pre-AIA ] section 112, paragraph 6, not whether a person of skill in the art could devise some means to carry out the recited function".
Regarding claim 16, applicant has not established possession of the full broad scope of the limitation “one or more controllers including executable instruction that cause the one or more controllers to adjust a position of the shifter actuator in response to a phase angle between two tone wheel angles of the three one wheels plus an offset angle, wherein the offset angle is determined by an amount of time for the shifter actuator to move from its present position to an engaged position” (claim 16) since the limitations are set forth without bound as to what element defines the offset angle (i.e., offset angle of what element or elements?) and as to what manner the phase angle plus the offset angle is to trigger the response, e.g., when the phase angle plus the offset angle is less than, equal to or greater than some value, or for all possible values of phase angle plus offset angle, or some other result of the phase angle plus offset angle. Further, the disclosure describes retrieval of the claimed “time” from “a look-up table” (para.0070 of the written description as filed on 2/2/2024) but fails to expressly describe or depict what, if any, time values the table might contain, nor how any one particular table value would be chosen over any other value of the table. Still further, applicant does not possess the full broad scope of claimed actuator engagement positions (e.g., actuator engaged with another actuator, or actuator engaged with a clutch, or with a brake, or with a gear, etc.) Due to this lack of specificity, the algorithms set forth in the written description are not sufficient to perform the broad scope of the claimed functions. See the various parts of MPEP 2163(II)(A)(3)(a)(ii) and MPEP 2181 II B quoted with regard to claim 1 above.
Regarding claims 2 and 3, applicant has not established possession of the full broad scope of the limitation “additional instructions” (claims 2 and/or 3) since they conflict with the particulars newly amended into claim 1 specifying that the claim 1 instructions determine the phase angle between tone wheels in a manner that constitutes new matter and/or insufficient description of the full broad scope (e.g., to include claim 2 and 3 additional instructions not requiring tone wheels of the claim 1 instructions). As detailed in the 35 USC 112(b) clarity rejections elsewhere below it is unclear whether the “additional instructions” (claims 2 and 3) are in fact additional/different relative to the claim 1 instructions or merely a further description of the same instructions claimed in claim 1, since applicant’s original structure (fig.2) shows a total of three tone wheels (283, 285, 281) two of which (283, 285) are fixed to rotate with clutch halves fixed to gears (252, 256), such that there are no originally disclosed clutch half instructions additional to the tone wheel instructions (i.e., the computer has no way to receive clutch half information that is distinct/different/without tone wheel information). See the various parts of MPEP 2163(II)(A)(3)(a)(ii) and MPEP 2181 II B quoted with regard to claim 1 above.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1-3, 6-8 and 16-20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Independent claims 1 and 16, each invoke 35 U.S.C. 112(f). However, it is unclear whether there is sufficient algorithm disclosure that is adequate to perform all of the claimed functions. See the 35 USC 112(a) written description rejection elsewhere above, MPEP 2181 II (B) and MPEP 2181 III, which state “if it is unclear whether there is sufficient supporting structure or whether the algorithm is adequate to perform the entire claimed function, it is appropriate to reject the claim under 35 U.S.C. 112(b)”.
The claim 1 limitations “minimum phase angle” and “angular backlash amount” are unclear as to what element or elements is/are to define them (i.e., minimum phase angle of what element or elements… angular backlash amount of what element or elements?)
The claim 2 is unclear as to how the “additional instructions” calculate the phase angle since the instructions set forth in claim 1 (from which claim 2 depends) are claimed as already determining the phase angle. Are the claim 1 instructions incorrect or otherwise insufficient without the additional claim 2 instructions? Do the claim 2 additional instructions arrive at the same phase angle determination as claim 1 such that claim 2 is redundant/unnecessary? Are there two distinct/different phase angles (determined via tone wheels vs. determined via clutch halves) and if so why aren’t the two distinct/different phase angles differently labeled? Note that applicant’s original structure (fig.2) shows a total of three tone wheels (283, 285, 281) two of which (283, 285) are fixed to rotate with clutch halves fixed to gears (252, 256), such that there are no originally disclosed clutch half instructions additional to the tone wheel instructions (i.e., the computer has no way to receive clutch half information that is distinct/different/without tone wheel information).
The claim 3 “additional instructions” are unclear by reasoning substantially similar to claim 2.
The claim 6 limitation “an offset angle” is unclear as to what elements are to define the angle (e.g., offset angle of what element or elements?) Further, it is unclear which of the numerous previously recited angles the claim 6 limitation “the two angles” is to refer.
The claim 7 limitation “determined by an amount of time…” is contrary to the accepted meanings of these terms and thus unclear. More particularly, the phrase “determined by” would suggest a machine for determining (e.g., determined by a computer, etc.) rather than “determined by an amount of time”. Further, it is unclear if the claim 7 recitation of “an amount of time…” is to refer to the same value of time previously set forth in claim 1 or to an additional/different value of time.
The claim 16 limitations “an offset angle” and “engaged position” are unclear as to what element or elements is/are to define them. An offset angle of what element or elements? A position of the shift actuator when engaged with what other element or elements?
The claim 20 limitation “an engaged position” is unclear as to whether it refers to the same engaged position recited previously in claim 16 or to an additional position. Further, it is unclear what element or elements are to define the engaged position (e.g., actuator engaged with what element or elements?). Lastly, it is unclear if the claim 20 “the position” is to further limit the claim 16 “present position” to be an engaged position or to redundantly repeat the claim 16 “engaged position”.
The remaining claims depend from one of the above noted claims and are thus similarly unclear/rejected.
Allowability
Regarding independent claims 1 and 16 (from which all other elected claims depend):
Piracha US2023/0108291 discloses numerous limitations of the claimed electric propulsion system (see explanations set forth in the previous Office action mailed 9/5/2025 and incorporated herein by reference) and discloses that the angles of the two clutch halves are measured by “angular position sensors” (para.0017) but does not expressly detail them to be of the claimed “tone wheel” type, nor does Piracha disclose an additional third tone wheel/sensor as required by claims 1 and 16.
Weilant US5842947 teaches an electric propulsion system, comprising: an electric machine (152); a step gear ratio transmission (14, 16) including three tone wheels (50, 122, 270) and three tone wheel position sensors (52, 124, 272), the step gear ratio transmission including a shifter actuator (150, 172, 222); and one or more controllers (“electronic controller or microprocessor”).
Neither Piracha nor Weilant suggest the totality of executable instruction particulars as set forth in either of claims 1 or 16.
However, no determination on allowability over the prior art can be made due to the 35 U.S.C. 112 issues detailed elsewhere above. Note the following:
See MPEP §2143.03(I), which states in part “an examiner should not simply speculate about the meaning of the claim language and then enter an obviousness rejection in view of that speculative interpretation. In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (The ‘considerable speculation’ by the examiner and the Board as to the scope of the claims did not provide a proper basis for an obviousness rejection.). A claim should not be rejected over prior art just because it is indefinite. Ionescu, 222 USPQ at 540 (citing Steele).”
See MPEP §2173.06, which states in part “where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.”
See also Ex parte Miyazaki, 89 USPQ2d 1207 (Board of Patent Appeals and Interferences 2008) (precedential) wherein the Board found that when the claims are indefinite "prior art rejections must fall, pro forma, because they necessarily are based on speculative assumption as to the meaning of the claims.”
See also the PTAB decision Ex parte Hyeon-Seag Kim, 2007-3890, Application 10/382,560 (Decided May 29, 2008) which was designated as “informative”. Therein the PTAB found that a claim that recites a relative term (i.e., “reduced”) without any baseline for comparison, the claim is unclear under 35 USC 112. The PTAB further found that the “speculation and conjecture” that “must be utilized by us and the artisan” for an unclear claim would prevent a proper comparison of the prior art to the claim. The PTAB supported their decision by cited two CCPA decisions as follows: “See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); See also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) (‘If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite.’)”. 1
Response to Arguments
Applicant argues that the claims have been amended to overcome the 35 USC 112 rejections. This is not persuasive. The amended claims remain rejected under 35 U.S.C. 112(a) and 35 U.S.C. 112(b) as is detailed in the reworded rejections above.
Applicant argues that “Amended claim 1 now includes the allowable subject matter recited in claim 16 related to the three tone wheels and the three tone wheel position sensors”. This is not persuasive. The previous and current Office actions did not determine that the limitations set forth in claim 16 were allowable. Rather, the “Allowability” section of the previous and current Office actions expressly state “However, no determination on allowability over the prior art can be made due to the 35 U.S.C. 112 issues”, and cite numerous MPEP sections, board decisions and case law examples which forbid application of prior art to claims which require considerable speculation as to their true scope/meaning.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
1 An informative decision provides Board norms on recurring issues, guidance on issues of first impression to the Board, guidance on Board rules and practices, and guidance on issues that may develop through analysis of recurring issues in many cases. See the Patent Trial and Appeal Board Standard Operating Procedure 2 (revision 10), section III.D., which states “A precedential decision is binding Board authority in subsequent matters involving similar facts or issues. Informative decisions set forth Board norms that should be followed in most cases, absent justification, although an informative decision is not binding authority on the Board.”