DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the AIA first to invent provisions. 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 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.
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-40, 53, and 57-63 in the reply filed on 10/20/2025 is acknowledged.
Claims 41-43, 44-52 and 54-56 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 10/20/2025.
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 1-40, 53, and 57-63 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.
Claim 1 recites “the locker being movable between an unlocked position, in which the locker does not restrict the ability of the drum to rotate about the wheel axis in response to rotation of the wheel, and a locked position, in which the locker restricts the ability of the drum to rotate about the wheel axis in response to rotation of the wheel.” Dependent claims 12 and 18 further describe a particular structural embodiment. That is, independent claim 1 is generic to dependent claims 12 and 18. Therefore, claim 1 is a genus because its scope encompasses more than one species. See MPEP § 2163(II)(A)(3)(a). Generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1171 (Fed. Cir. 2010) (en banc) ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries."). Where the specification does not provide sufficient evidence that the inventor invented a generic claim but rather only contemplates a single, non-generic embodiment, the written description requirement is not satisfied. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45, 76 USPQ2d 1724, 1731-32 (Fed. Cir. 2005).
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species. 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. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014). See MPEP § 2163.05. A "representative number of species" means that the species which are adequately described are representative of the entire genus: (1) Other embodiments can be “visualized” or “imagined” without difficulty; and (2) their performance characteristics can be predicted by resort to known scientific laws. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). Here, other embodiments cannot be “visualized” or “imagined” without difficulty because nowhere in the original disclosure does it contemplate a species other than the one disclosed. In particular, the specification does not refer to any alternatives or equivalents to the particular embodiment related to that described in claims 12 and 18; the specification makes no indication of equivalents thereof being well-known or conventional; and the specification does not provide any contemplation in the form of disclosure, suggestion, insight, teachings, or guidance from which one of ordinary skill in the art would be able to “visualize or recognize” species apart from the one that was disclosed. An attempt to do so without the benefit of said disclosure, suggestion, insight, teachings, or guidance may require one to tread into the waters of inventive thinking. As such, the evidence does not support that one having ordinary skill in the art would have been able to “visualize” or “imagine” other embodiments without difficulty. As such, the evidence does not support that one having ordinary skill in the art would have been able to “visualize” or “imagine” other embodiments without difficulty. See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 94 USPQ2d 1161, 1171 (Fed. Cir. 2010) (en banc); see also In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (“a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws” [emphasis]).
As such, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites “the locker in the unlocked position being engaged by the wheel for rotation of the wheel and the drum together about the wheel axis, and the locker in the locked position being disengaged from the wheel for rotation of the wheel relative to the drum, thereby allowing inertial motion of the output shaft of the motor and rotation of the wheel without causing rotation of the drum, and thereby reducing or eliminating the effect of inertia of the motor on the output of the gear assembly.” Dependent claims 16 and 38 further describes a particular structural embodiment. That is, independent claim 1 is generic to dependent claims 16 and 38. Therefore, claim 1 is a genus because its scope encompasses more than one species. See MPEP § 2163(II)(A)(3)(a). Generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1171 (Fed. Cir. 2010) (en banc) ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries."). Where the specification does not provide sufficient evidence that the inventor invented a generic claim but rather only contemplates a single, non-generic embodiment, the written description requirement is not satisfied. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45, 76 USPQ2d 1724, 1731-32 (Fed. Cir. 2005).
The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species. 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. See AbbVie Deutschland GmbH & Co., KG v. Janssen Biotech, Inc., 759 F.3d 1285, 1300, 111 USPQ2d 1780, 1790 (Fed. Cir. 2014). See MPEP § 2163.05. A "representative number of species" means that the species which are adequately described are representative of the entire genus: (1) Other embodiments can be “visualized” or “imagined” without difficulty; and (2) their performance characteristics can be predicted by resort to known scientific laws. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). Here, other embodiments cannot be “visualized” or “imagined” without difficulty because nowhere in the original disclosure does it contemplate a species other than the one disclosed. In particular, the specification does not refer to any alternatives or equivalents to the particular embodiment related to that described in claims 16 and 38; the specification makes no indication of equivalents thereof being well-known or conventional; and the specification does not provide any contemplation in the form of disclosure, suggestion, insight, teachings, or guidance from which one of ordinary skill in the art would be able to “visualize or recognize” species apart from the one that was disclosed. An attempt to do so without the benefit of said disclosure, suggestion, insight, teachings, or guidance may require one to tread into the waters of inventive thinking. As such, the evidence does not support that one having ordinary skill in the art would have been able to “visualize” or “imagine” other embodiments without difficulty. As such, the evidence does not support that one having ordinary skill in the art would have been able to “visualize” or “imagine” other embodiments without difficulty. See Ariad Pharmaceuticals, Inc. v. Eli Lilly and Co., 94 USPQ2d 1161, 1171 (Fed. Cir. 2010) (en banc); see also In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970) (“a single embodiment provides broad enablement in the sense that, once imagined, other embodiments can be made without difficulty and their performance characteristics predicted by resort to known scientific laws” [emphasis]).
As such, 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
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 1-40, 53, and 57-63 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 “the locker being movable between an unlocked position, in which the locker does not restrict the ability of the drum to rotate about the wheel axis in response to rotation of the wheel, and a locked position, in which the locker restricts the ability of the drum to rotate about the wheel axis in response to rotation of the wheel.” This recitation renders the claim as indefinite because it merely states an intended result without setting forth a clear cut indication of the scope of the subject matter covered by the claim i.e. the structural limits of how the mere positioning of the locker restricts or allows the drum to rotate; and one having ordinary skill in the art would not know from the claim terms what structure is encompassed by the claim. See MPEP § 2173.05(g). Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234, 55 USPQ 381 (1942) (holding indefinite claims that recited substantially pure carbon black "in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior"). Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). See also Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed. Cir. 2005) where a claim directed to a software based system for creating a customized computer interface screen recited that the screen be "aesthetically pleasing," which is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on the screen. Here, likewise, the claim recites is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on how the mere positioning of the locker produces the result of the drum being able to rotate versus being restricted from rotation. As such, the recitation renders the claim as indefinite. “[W]here there is a great deal of confusion and uncertainty as to the proper interpretation of the claim limitations of a claim, it would not be proper to reject such a claim based on the basis of prior art.” See MPEP § 2173.06.
Claim 1 recites “the locker in the unlocked position being engaged by the wheel for rotation of the wheel and the drum together about the wheel axis, and the locker in the locked position being disengaged from the wheel for rotation of the wheel relative to the drum, thereby allowing inertial motion of the output shaft of the motor and rotation of the wheel without causing rotation of the drum, and thereby reducing or eliminating the effect of inertia of the motor on the output of the gear assembly.” This recitation renders the claim as indefinite because it merely states an intended result without setting forth a clear cut indication of the scope of the subject matter covered by the claim i.e. the structural limits of how the mere positioning of the locker dictates whether the wheel and drum rotate together; and one having ordinary skill in the art would not know from the claim terms what structure is encompassed by the claim. See MPEP § 2173.05(g). Notwithstanding the permissible instances, the use of functional language in a claim may fail "to provide a clear-cut indication of the scope of the subject matter embraced by the claim" and thus be indefinite. In re Swinehart, 439 F.2d 210, 213 (CCPA 1971). For example, when claims merely recite a description of a problem to be solved or a function or result achieved by the invention, the boundaries of the claim scope may be unclear. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255, 85 USPQ2d 1654, 1663 (Fed. Cir. 2008) (noting that the Supreme Court explained that a vice of functional claiming occurs "when the inventor is painstaking when he recites what has already been seen, and then uses conveniently functional language at the exact point of novelty") (quoting General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 371 (1938)); see also United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 234, 55 USPQ 381 (1942) (holding indefinite claims that recited substantially pure carbon black "in the form of commercially uniform, comparatively small, rounded smooth aggregates having a spongy or porous exterior"). Further, without reciting the particular structure, materials or steps that accomplish the function or achieve the result, all means or methods of resolving the problem may be encompassed by the claim. Ariad Pharmaceuticals., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1353, 94 USPQ2d 1161, 1173 (Fed. Cir. 2010) (en banc). See also Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342, 75 USPQ2d 1801 (Fed. Cir. 2005) where a claim directed to a software based system for creating a customized computer interface screen recited that the screen be "aesthetically pleasing," which is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on the screen. Here, likewise, the claim recites is an intended result and does not provide a clear cut indication of scope because it imposed no structural limits on how the mere positioning of the locker produces the result of the wheel and drum rotating together versus the wheel rotating relative to the drum. As such, the recitation renders the claim as indefinite. “[W]here there is a great deal of confusion and uncertainty as to the proper interpretation of the claim limitations of a claim, it would not be proper to reject such a claim based on the basis of prior art.” See MPEP § 2173.06.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL D YABUT whose telephone number is (571)270-5526. The examiner can normally be reached on Monday through Friday from 9:00 AM to 5:00 PM.
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/DANIEL D YABUT/Primary Examiner, Art Unit 3656