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 .
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 and 3-20 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.
Claims 1, 11, and 20 each require “the clutch pin thereby disengages the gear from a drivetrain of the winch” (or similar). This is not supported by the original disclosure. Specifically, the original disclosure teaches a ring gear (406) which is held in place axially via a retaining ring (408) (e.g. see fig. 4 and par. 104). Grooves (fig. 4) in the ring gear (406) receive the clutch pin (416) to stop a freespooling action of the winch transmission (par. 112), or the pin (416) is withdrawn (rightward in fig. 4) in order to disengage the pin (416) from the ring gear (406) (see par. 111). (This is reinforced in paragraphs 114-116.)
There is no description of the solenoid (410) or accompanying pin (416) actually moving the ring gear (406) to disengage it from the transmission. That is, while paragraph 27 and original claim 1 mention the ring gear being “removably coupled” to the drivetrain, there is no indication that movement of pin 416 removes (or disengages) the ring gear from the drivetrain (how could it?). To the contrary, ring gear (406) is held in place by a retaining ring (408), and does not appear removable (or disengageable) from the transmission except by disassembly. Thus it appears that when pin 416 retracts, ring gear 406 freely spins in conjunction with the transmission in a freespool state, and does not disengage from the transmission.
Claims 3-10 and 12-19 each require the new matter of the claims upon which they respective depend.
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 and 3-20 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.
Claim 11 line 8 recites “the winch,” which lacks antecedent basis.
Claims 1, 11, and 20 each require “the clutch pin thereby disengages the gear from a drivetrain of the winch” (or similar), which is not understood in light of the specification. The original disclosure teaches a ring gear (406) which is held in place axially via a retaining ring (408) (e.g. see fig. 4 and par. 104). Grooves (fig. 4) in the ring gear (406) receive the clutch pin (416) to stop a freespooling action of the winch transmission (par. 112), or the pin (416) is withdrawn (rightward in fig. 4) in order to disengage the pin (416) from the ring gear (406) to allow freespooling of the transmission (see par. 111). (This is reinforced in paragraphs 114-116.)
There is no description of the solenoid (410) or accompanying pin (416) actually moving the ring gear (406) to disengage it from the transmission. That is, while paragraph 27 and original claim 1 mention the ring gear being “removably coupled” to the drivetrain, there is no indication that movement of pin 416 removes (or disengages) the ring gear from the drivetrain. To the contrary, ring gear (406) is held in place by a retaining ring (408), and does not appear to be removable or disengageable other than by disassembly. Thus it appears that when pin 416 retracts, ring gear 406 freely spins in conjunction with the transmission in a freespool state, and does not disengage from the transmission.
As the claims are read in light of the specification, the scope of the claims cannot be determined insofar as the specification fails to discuss recitations required by the claims.
Claims 3-10 and 12-19 each require the vague and ambiguous language present in the claims upon which they respective depend.
Conclusion
Applicant's amendment necessitated the new ground(s) 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 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 Nathaniel L Adams whose telephone number is (571)272-4830. The examiner can normally be reached M-F 8-4 Pacific Time.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Victoria P Augustine can be reached at (313) 446-4858. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.L.A/Examiner, Art Unit 3654
/Victoria P Augustine/ Supervisory Patent Examiner, Art Unit 3654
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