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 .
Examiner’s Note
All foreign references cited within this office action have had translated copies provided which the examiner relies upon.
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:
In claim 10, the “indicating element” in the limitation “an indicating element for reporting a currently set assistance level” invokes 112(f) as “indicating element” is a term that does not have definite structure which enables the reporting of a currently set assistance level.
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.
A review of the specification (paragraph 0022) shows that the following appears to be the corresponding structure to these claim limitations:
“The control unit 2 includes an indicating element in the form of a display 20. On this display 20 an operating part is provided for switching an assistance level, for example in the form of a switch. When the drive device A is activated, a mode indicator 201 can be indicated on the display 20, which indicates to a user of the electric bicycle 1 what assistance level currently is chosen. Possible assistance levels here include for example "Eco", "Tour", "Sport" and "Boost".” (Emphasis added.)
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
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(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) 1-2, 9, and 11-12 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Shahana US 20190300115 A1 (hereinafter Shahana).
Regarding claims 1 and 12, Shahana teaches a drive device for an electric bicycle (paragraph 0045 "E-bike"), comprising
- a bottom bracket shaft for driving a wheel of the electric bicycle by muscle power (Figure 1 shows a typical pedal system for human power with crankshaft 12A; Abstract explicitly discloses that the bike is human powered),
- an electric motor for providing an additional driving torque for driving the wheel (paragraph 0005 discloses an electric motor to assist in propulsion), and
- an electronic control unit for controlling the electric motor (Figure 2 42 "electronic controller"; paragraph 0051 discloses the controller controls driving of the motor by outputting commands to a drive circuit),
wherein via the electronic control unit, a nominal cadence, from which a maximum driving power is provided by the electric motor (Figure 5 shows that maximum motor torque TX is dependent on a cadence N of each selected mode), can be specified for the bottom bracket shaft by a user of the electric bicycle by selecting one of at least two different predefined assistance levels (paragraph 0024 discloses that a user can switch between two control modes; paragraph 0076 discloses control modes L31 and L32 are associated with cadence thresholds N3 and N4 as shown on Figure 5).
Regarding claim 2, Shahana teaches all of claim 1 as detailed above. Shahana further teaches that in a first assistance level of the at least two different predefined assistance levels a larger nominal cadence is specified than in a second assistance level (Figure 5 and paragraph 0076 discloses that cadence threshold N4 is higher than cadence threshold N3).
Regarding claim 9, Shahana teaches all of claim 1 as detailed above. Shahana further teaches that the drive device includes exactly one electric motor (Figure 1 30 shows only one motor).
Regarding claim 11, Shahana teaches all of claim 1 as detailed above. Shahana further teaches an electric bicycle with a drive device according to claim 1 (Abstract and paragraph 0045).
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.
Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shahana as applied to claim 1 above, and further in view of Kawasaki et al. DE 102020101268 A1 (hereinafter Kawasaki) and Loehr DE 19855585 A1 (hereinafter Loehr).
Regarding claim 3, Shahana teaches all of claim 2 as detailed above.
Shahana does not teach a nominal cadence of 80 revolutions per minute is set in the first assistance level.
Kawasaki teaches that a nominal cadence of 80 revolutions per minute is set in the first assistance level (translated page 11 paragraph 3 discloses a set cadence threshold of 80 RPM).
One of ordinary skill in the art would recognize that a biker would likely pedal at a specific cadence wherein the human body is only capable of pedaling so fast, thus limiting the options of pedaling frequencies (cadences) that can feasibly be used for a motor assist system. Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to try the teachings of Kawasaki and incorporate it into the teachings of Shahana such that one control mode of Shahana would use the cadence threshold of Kawasaki since there is a finite number of identified, predictable potential solutions (i.e. cadences) to the recognized need (cadence selection) and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Shahana does not teach a nominal cadence of 60 revolutions per minute is set in the second assistance level.
Loehr teaches that a nominal cadence of 60 revolutions per minute is set in the second assistance level (translated page 7 paragraph 1 discloses that a motor has a cadence of 60 RPM in one support mode).
One of ordinary skill in the art would recognize that a biker would likely pedal at a specific cadence wherein the human body is only capable of pedaling so fast, thus limiting the options of pedaling frequencies (cadences) that can feasibly be used for a motor assist system. Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to try the teachings of Loehr and incorporate it into the teachings of Shahana such that one control mode of Shahana would use the cadence threshold of Loehr since there is a finite number of identified, predictable potential solutions (i.e. cadences) to the recognized need (cadence selection) and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shanana as applied to claim 1 above, and further in view of Hahn et al. US 12208858 B2 (hereinafter Hahn).
Regarding claim 4, Shahana teaches all of claim 1 as detailed above.
Shahana does not teach that via the electronic control unit at least two different cadence ranges can be selected, within which nominal cadences for the at least two different predefined assistance levels must lie.
Han teaches that via the electronic control unit at least two different cadence ranges can be selected (column 11 lines 19-41 disclose a user adjustable cadence bounds), within which nominal cadences for the at least two different predefined assistance levels must lie (column 11 lines 19-41 disclose that a target cadence defined by a user must be within selected cadence bounds).
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have modified Shahana to incorporate the teachings of Hahn such that cadence bounds can be defined by a user according to the teachings of Hahn wherein any cadence targets of Shahana must fall within these bounds according to Hahn. This modification would be done with a reasonable expectation of success to prevent unexpected motor assistance beyond desired range.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shanana as modified by Hahn as applied to claim 4 above, and further in view of Tsuchizawa US 20160347406 A1 (hereinafter Tsuchizawa).
Regarding claim 5, the modified Shahana reference teaches all of claim 4 as detailed above. Hahn teaches that a cadence range can be selected via the electronic control unit (column 11 lines 19-41) as detailed above.
The modified Shahana reference does not teach a first cadence range of 30 to 60 revolutions per minute and a second cadence range of 60 to 90 revolutions per minute.
Tsuchizawa teaches a first cadence range of 30 to 60 revolutions per minute (paragraph 0043 discloses a cadence range of 31-60 RPM where torque adjustment occurs) and a second cadence range of 60 to 90 revolutions per minute (paragraph 0043 discloses a cadence range of 61-90 RPM where torque adjustment occurs).
One of ordinary skill in the art would recognize that a biker would likely pedal within a specific cadence range wherein the human body is only capable of pedaling so fast, thus limiting the options of pedaling frequencies (cadences) that can feasibly be used for a motor assist system. Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to try the teachings of Tsuchizawa and incorporate it into the teachings of the modified Shahana reference such that the cadence ranges of Hahn can be adjusted to one of the two specific motor torque adjustment cadence ranges of Tsuchizawa since there is a finite number of identified, predictable potential solutions (i.e. cadences) to the recognized need (cadence range selection) and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shanana as modified by Hahn and Tsuchizawa as applied to claim 5 above, and further in view of Takayama et al. DE 102019127234 A1 (hereinafter Takayama).
Regarding claim 6, the modified Shahana reference teaches all of claim 5 as detailed above. Hahn teaches that a cadence range can be selected via the electronic control unit (column 11 lines 19-41) as detailed above.
The modified Shahana reference does not teach a third cadence range of 50 to 80 revolutions per minute.
Takayama teaches a third cadence range of 50 to 80 revolutions per minute (translated page 15 paragraph 1 discloses controlling a cadence between 60-70 RPM).
One of ordinary skill in the art would recognize that a biker would likely pedal within a specific cadence range wherein the human body is only capable of pedaling so fast, thus limiting the options of pedaling frequencies (cadences) that can feasibly be used for a motor assist system. Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of filing to try the teachings of Takayama and incorporate it into the teachings of the modified Shahana reference such that the cadence ranges of Hahn can be adjusted to the controlling cadence range of Takayama since there is a finite number of identified, predictable potential solutions (i.e. cadences) to the recognized need (cadence range selection) and one of ordinary skill in the art could have pursued the known potential solutions with a reasonable expectation of success.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shanana as modified by Hahn as applied to claim 4 above, and further in view of Vasiliotis et al. US 20090164076 A1 (hereinafter Vasiliotis) and Shimano et al. US2013267376A1 (Shimano).
Regarding claim 7, the modified Shahana reference teaches all of claim 4 as detailed above. Shahana further teaches that identical assistance levels can be selected, via the electronic control unit, by the user of the electric bicycle independently of a selected cadence range (paragraph 0024 discloses that a user can switch between two control modes; examiner interprets Shahana's lack of consideration of cadence ranges when selecting assistance levels as being "independent" to any selected cadence ranges taught by the additional art of Hahn).
Shahana does not teach that the assistance levels specify different nominal cadences depending on the cadence range. To teach this, a clever combination of Vasiliotis and Shimano is required.
Vasiliotis teaches that cadence ranges are adjusted by shifting gears (paragraph 0036 discloses adjusting cadence ranges by shifting gears).
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have modified Shahana to incorporate the teachings of Vasiliotis such that cadence range changing as taught by Hahn is done by swapping transmission gears as taught by Vasiliotis. This modification would be made with a reasonable expectation of success to reduce unnecessary strain caused by maintaining gears unfit for a certain cadence range and improve efficiency by ensuring optimal mechanical advantage available in a desired cadence range.
The modified Shahana still does not teach that the assistance levels specify different nominal cadences depending on the cadence range.
Shimano teaches that that the assistance levels specify different nominal cadences depending on the transmission gear (paragraph 0058 discloses that a prescribed crank rotational speed is set based on each transmission gear).
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have modified Shahana to incorporate the teachings of Shimano such that when transmission gears are changed, a prescribed crank rotational speed of a set mode is changed based on the new gearset as taught by Shimano. Since Vasiliotis teaches that cadence ranges are changed by changing a transmission gear as detailed above, this combination would effectively accomplish the intended result of specifying different nominal cadences depending on the cadence range. This modification would be made with a reasonable expectation of success to ensure that a cadence speed is appropriate for a set transmission as disclosed in Shimano (paragraph 0058).
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shanana as applied to claim 1 above, and further in view of Chan US 20110183805 A1 (hereinafter Chan).
Regarding claim 8, Shahana teaches all of claim 1 as detailed above.
Shahana does not explicitly teach that the driving torque additionally provided by the electric motor is proportional to a rider torque introduced by muscle power via the bottom bracket shaft.
Chan teaches that the driving torque additionally provided by the electric motor is proportional to a rider torque introduced by muscle power via the bottom bracket shaft (paragraph 0216 "the output torque from the electric motor 8036 is proportional to the magnitude of torque applied by the cyclist on the pedals").
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have further modified Shahana to incorporate the teachings of Chan such that the motor torque of Shahana is proportional to driver torque as taught by Chan. This modification would be made with a reasonable expectation of success to improve responsiveness of motor assistance to user needs.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shanana as applied to claim 1 above, and further in view of Aoki et al. US 20120081080 A1 (hereinafter Aoki).
Regarding claim 10, Shahana teaches all of claim 1 as detailed above.
Shahana does not explicitly teach that the electronic control unit comprises an indicating element for reporting a currently set assistance level.
Aoki teaches that the electronic control unit comprises an indicating element for reporting a currently set assistance level (paragraph 0073 "The mode display area 210 serves to display a presently set mode… The mode display area 210 also includes a mode changer switch 224 for changing modes to be set").
It would have been prima facie obvious to one of ordinary skill in the art at the time of filing to have modified Shahana to incorporate the teachings of Aoki such that the assistance levels of Shahana can be displayed and modified by the display element of Aoki. This modification would be done with a reasonable expectation of success to improve user awareness of the current mode.
Response to Amendment
Claim amendments filed 4/14/2026 have been received and fully considered and overcome the claim objection of record detailed in the Office Action dated 4/14/2026. These/this objection have/has been withdrawn.
Response to Arguments
Applicant's arguments filed 4/14/2026 have been fully considered but they are not persuasive.
On pages 5-7, applicant argues that the claimed invention applies a maximum power depending on the user’s cadence. Applicant further argues that the maximum power is applied from the respective rotational speed on wherein the maximum power is a single fixed-value. Examiner stresses that these latter features are not claimed. Instead, the maximum power setting limitation reads as follows:
“a nominal cadence, from which a maximum driving power is provided by the electric motor, can be specified for the bottom bracket shaft by a user of the electric bicycle by selecting one of at least two different predefined assistance levels.”
This can be broken down into two elements for simplicity of understanding:
a maximum driving power is provided by the electric motor based on (examiner understands “from which” to be equivalent to “based on”) a nominal cadence
wherein the nominal cadence is specified for the bottom bracket shaft by a user of the electric bicycle by selecting one of at least two different predefined assistance levels.
Here, the user selects an assist mode which specifies the nominal cadence (2). Based on the specified nominal cadence, a maximum driving power is provided (1). Nothing in the claim language explicitly states or suggests that the maximum driving power is fixed for any assistance mode selected, nor does it explicitly state or suggest that the maximum power can only be provided at the specified nominal cadence onward. Instead, it only states that a maximum driving power is provided based on a specified nominal cadence. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., a fixed maximum power ) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). To overcome the prior art of record, examiner recommends amending the claims to contain the argued limitations.
Regarding the argument that Shanana does not teach that the maximum power is selected based on the nominal cadence, examiner respectfully points to Figure 5 which the applicant has kindly provided in their remarks. As shown, the maximum power changes based on the selected threshold cadences (N3 and N4) and based on the current cadence N. One of ordinary skill in the art would recognize these as nominal cadences as a rider attempting to keep a cadence would request additional assistance power when above the nominal cadence and want less assistance power when above the nominal cadence to prevent the user from overshooting the desired nominal value. Thus, this limitation is clearly anticipated by Shanana.
Conclusion
THIS ACTION IS MADE FINAL. 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 Ashley Tiffany Schoech whose telephone number is (571)272-2937. The examiner can normally be reached 4:45 am - 3:15 pm PT Monday - Thursday.
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/A.T.S./Examiner, Art Unit 3669
/Erin M Piateski/Supervisory Patent Examiner, Art Unit 3669
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