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 .
Status of the Claims
Applicant’s response filed 7/6/26 (hereinafter Response) has been entered. Claims 13-24 remain pending in the application.
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”), i.e., the “anti-rotation means” of claim 15 is 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.
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.
Claims 13-15 and 24 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by WO 2009/047806 A2 to Chithambaram.
Regarding claim 13, Chithambaram discloses a --saddle-ride motorcycle (Figs. 1(a) and 4 & Abstract) comprising:
at least one driving wheel (104) (Figs. 1(a) and 4 & p. 9 lns 8-21);
a hybrid propulsion unit (102,106) (Figs. 1(a) and 4 & p. 9 ln 22- p. 10 ln 13), comprising:
a thermal combustion engine (106) including a driving shaft (A) (Annotated Fig. 4 & p. 9 ln 22- p. 10 ln 13 disclose the engine transfers power from the engine to the drive sprocket via the drive shaft);
a transmission assembly (B) mechanically connecting the driving shaft (A) to the at least one driving wheel (104), wherein the transmission assembly (B) is at least partially housed in a first shell (C,I) and comprises at least one transmission shaft (D) protruding from the first shell (C,I) and connected to a hub of the at least one driving wheel (Annotated Fig. 4 & p. 9 lns 8-21 disclose the and depict the transmission shaft is connected to the hub and casing 200 of the rear
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wheel 104);
an electric machine (102) configured to operate in combination with or independently of the thermal combustion engine (106) (Annotated Fig. 4 & p. 9 ln 22- p. 10 ln 13);
wherein the electric machine (102) is housed in a second shell (200,F) arranged within a rim (E) of the driving wheel (104) (Annotated Fig. 4 & p. 9 ln 22- p. 10 ln 13);
wherein the second shell (200,F) is rigidly connected to the first shell (C,I) and is crossed by the transmission shaft (D) (Annotated Fig. 4 & p. 9 ln 22- p. 10 ln 13 disclose and depict that at least a portion of the shell is bolted to the shell C);
wherein the electric machine (102) comprises a stator (406) holding a fixed position within the second shell (200,F) and a rotor (404) constrained to the transmission shaft (D) to rotate within the second shell (200) (Annotated Fig. 4 & p. 9 lns 8-21 disclose and depict the rotor is integrated with the casing 200 which is constrained to the transmission shaft D);
wherein the second shell (200,F) is configured to enclose the stator (406) and the rotor (404) (Annotated Fig. 4 & p. 9 lns 8-21).
Regarding claim 14, depending on claim 13, Chithambaram further discloses wherein the first shell (C,I) comprises at least a first portion (I) and a second portion (C) connected to each other, and wherein the second portion (C) is coupled with the second shell (200,F) (Annotated Fig. 4. Examiner notes that to the extent that one could make an argument that the line shown at arrow 106 on the shell C,I does not explicitly disclose a multi-piece shell, it would have been obvious to one having ordinary skill in the art before the effective filing date to have made the shells C,I two separate shells, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. See MPEP 2144.04(V)(C).).
Regarding claim 15, depending on claim 14, Chithambaram further discloses wherein anti-rotation means is/are provided between the first shell (C,I) and the second shell (200,F) to prevent or dampen a relative rotation between the first shell (C,I) and the second shell (200,F) (Annotated Fig. 4 depicts fastener G prevents rotation between the shells).
Regarding claim 24, depending on claim 13, Chithambaram further discloses wherein the rim (E) and the rotor (404) are torsionally constrained to each other (Annotated Fig. 4 and p. 9 lns 8-13 disclose and depict the rim and the rotor are integrated with each other and therefore at least to some degree are torsionally constrained to each other).
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 16-18 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Chithambaram or, in the alternative, under 35 U.S.C. 103 as obvious over Chithambaram in view of US 20210194302 A1 to Purchase et al (hereinafter Purchase).
Regarding claim 16, depending on claim 13, Chithambaram further discloses wherein the second shell (200,F) comprises a first half-shell (F) and a second half-shell rigidly (200) connected to the first half-shell (F) (Annotated Fig. 4 depicts a rigid connection between case F and case 200, e.g., see overlap of casing at tip of arrow F. Due to the structural relationship of the shaft D rotationally supporting the case 200 and the case F being fixed to the first shell C via fasteners G, the cases 200 and F are interpreted as being rigidly connected to each other.).
Assuming, arguendo, that Chithambaram did not explicitly disclose a second half-shell rigidly (200) connected to the first half-shell (F), Purchase teaches that it was old and well known in the art of electric wheel hub motors, before the effective filing date of the claimed invention, for a second half-shell rigidly (106) connected to the first half-shell (102) (Figs. 1 and 6 & [0067] teach that the two housings rotate relative to each other but are still rigidly mounted because they only allow up to 1mm of movement relative to each other).
Therefore, it would have been obvious to one of ordinary skill in the art of electric hub motors before the effective filing date of the claimed invention to modify the hub motor disclosed by Chithambaram to incorporate disclose a second half-shell rigidly connected to the first half-shell as taught by Purchase in order to rigidly support the two shells and to create a debris free interior cavity, e.g., see Purchase [0067], and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 17, depending on claim 16, Chithambaram further discloses wherein:
the first shell (C,I) comprises at least a first portion (I) and a second portion (C) connected to each other (Annotated Fig. 4. Examiner notes that to the extent that one could make an argument that the line shown at arrow 106 on the shell C,I does not explicitly disclose a multi-piece shell, it would have been obvious to one having ordinary skill in the art before the effective filing date to have made the shells C,I two separate shells, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. See MPEP 2144.04(V)(C).);
the second portion (C) is coupled with the second shell (200,F); and the first half-shell (F) is rigidly connected to the second portion (C) of the first shell (C,I) (Annotated Fig. 4 depicts rigid connection via fasteners G).
Regarding claim 18, depending on claim 16, Chithambaram further discloses wherein the second half-shell (200) is pivotably supported on the transmission shaft (D) (Annotated Fig. 4 & p. 9 lns 8-13 depict and disclose the shaft D has a splined connection with case 200 which when supplied with current, the case rotates/pivots).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Chithambaram, optionally in view of Purchase under the above 102/103 rejection, and further in view of EP 1 895 644 A2 to Just.
Regarding claim 19, depending on claim 16, Chithambaram further discloses wherein the stator (406) is connected to a portion of at least one of the first half-shell (F) and the second half-shell (200) (Annotated Fig. 4 & p. 9 lns 8-13)
Chithambaram does not appear to explicitly disclose the stator comprises stator windings.
Just teaches that it was old and well known in the art of hybrid electric vehicles, e.g., see [0049], before the effective filing date of the claimed invention, for the stator to comprise stator windings ([0040], [0050], and [0085] teach the stator has windings).
Therefore, it would have been obvious to one of ordinary skill in the art of hybrid vehicles before the effective filing date of the claimed invention to modify the electric motor disclosed by Chithambaram to incorporate the for the stator to have stator windings as taught by Just in order to form a stator winding body, e.g., see Just [0040], and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Claims 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over Chithambaram in view of Just.
Regarding claim 20, depending on claim 13, Chithambaram further discloses wherein:
the rotor (404) comprises a support portion (404) supporting a plurality of rotor windings; and
the support portion (404) is connected, directly or indirectly, to the transmission shaft (D) to rotate at the same speed (Annotated Fig. 4 depicts the rotor is connected to the transmission shaft D via the casing 200).
Chithambaram does not appear to explicitly disclose that the rotor (404) comprises a support portion (404) supporting a plurality of rotor windings.
Just teaches that it was old and well known in the art of hybrid electric vehicles, e.g., see [0049], before the effective filing date of the claimed invention, for the rotor to comprise a support portion supporting a plurality of rotor windings ([0040] and [0085] teach the rotor can have a support portion with windings).
Therefore, it would have been obvious to one of ordinary skill in the art of hybrid vehicles before the effective filing date of the claimed invention to modify the electric motor disclosed by Chithambaram to incorporate the for the rotor to have a support portion supporting a plurality of rotor windings as taught by Just in order to form a rotor winding body, e.g., see Just [0040], and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 21, depending on claim 20, the modified combination of Chithambaram/ Just further discloses wherein the rotor (Chithambaram – 404) is arranged within the second shell (Chithambaram – 200,F) and rotates about the transmission shaft (Chithambaram - D) in a radially outer position relative to the stator (Chithambaram – 406) (Chithambaram – Annotated Fig. 4).
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Chithambaram in view of Purchase.
Regarding claim 22, depending on claim 13, Chithambaram does not appear to explicitly disclose wherein the rim of the driving wheel is connected to a first portion of the transmission shaft different from a second portion of the transmission shaft on which the second shell and the rotor rest.
Purchase teaches that it was old and well known in the art of motorcycle electric motors, before the effective filing date of the claimed invention, for the rim (192) of the driving wheel (500) is connected to a first portion (X) of the transmission shaft (108) different from a second portion (Y) of the transmission shaft (108) on which the second shell (102) and the rotor rest (146) (Annotated Fig. 11, Fig. 16A & [0087]).
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Therefore, it would have been obvious to one of ordinary skill in the art of motorcycle electric motors before the effective filing date of the claimed invention to modify the electric motor of the motorcycle disclosed by Chithambaram to incorporate for the rim of the driving wheel is connected to a first portion of the transmission shaft different from a second portion of the transmission shaft on which the second shell and the rotor rest as taught by Purchase in order to reduce the overall size and weight of the motor, thereby improving efficiency, e.g., see Purchase [0004], and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Regarding claim 23, depending on claim 22, the modified combination of Chithambaram/ Purchase further discloses wherein the transmission shaft (Chithambaram – D/Purchase - 108) comprises a third portion (Chithambaram – Z/Purchase - Z) operatively connected to the transmission assembly (Chithambaram – B), wherein the first portion (Chithambaram – X/Purchase - X) and the third portion (Chithambaram – Z/Purchase - Z) are opposite to each other with respect to the second portion (Purchase - Y) (Annotated Fig. 4/Purchase – Annotated Fig. 11 noting that using the teachings of Purchase to modify the motor of Chithambaram, the portion Z of shaft 108 of Purchase would necessarily be connected to the transmission B of Chithambaram because it could not go through the bolt used to secure the rim 192 to the shaft 108 of Purchase.).
It would have been obvious to have modified Chithambaram in view of the teachings of Purchase for at least the same reasons discussed above in claim 22 and because doing so could be readily and easily performed by any person of ordinary skill in the art, without undue experimentation or risk of unexpected results.
Response to Arguments
Applicant's arguments filed in the Response directed toward the 35 USC §102 rejection of the claims have been fully considered but they are not persuasive. See Response pp. 5-8.
Applicant on pp. 5-7 takes issue with Chithambram disclosing that the second shell is rigidly connected to the first shell because the casing 200 is disclosed as rotating with the rear wheel relative to the first shell. Examiner disagrees with this analysis. As stated in the non-final office action mailed 4/8/26 (hereinafter Office Action) and repeated above, the second shell is interpreted as being two components, shell 200 and shell F, and second shell is interpreted as being rigidly connected to the first shell because shell F is depicted as being bolted to first shell, C,I, via bolt “G” as clearly shown in the picture. Assuming, arguendo, that the bolt is not explicitly shown in Fig. 4, p. 8 lns 9-11 further support that the motor casing is secured to the support arm via bolts and thus is appropriately as being rigidly attached to the first case.
Applicant on pp. 7-8 takes issue with Chithambaram disclosing “wherein the second shell is configured to enclose the stator and the rotor” because “the second shell is itself formed by the stator and the rotor.” Examiner disagrees with this line of reasoning. Initially, Examiner appreciates the effort Applicant went through to annotate a figure with color, however, documents uploaded as a PDF are unfortunately converted into grayscale. Therefore it is possible that a portion of Applicant’s argument is not clearly understood. Chithambaram discloses rotor 404 and stator 406 and as mapped in the Office Action and again above, the second shell is interpreted as being the combination of F and 200. Based on this disclosure and as shown in Fig. 4 the second shell is interpreted as enclosing the rotor 404 and stator 406 because the second shell, i.e., F,200, fully surrounds and encloses it. It is unclear why or how the rotor being integral with the casing 200 would negate the enclosing aspect of the casing. Using an apple as an analogy, an apple’s skin can be interpreted as enclosing the flesh and seeds even though the skin, flesh, and seeds are all integrated with each other.
For at least the above reasons Applicant’s arguments are not persuasive and the rejection is maintained.
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 CHRISTOPHER B WEHRLY whose telephone number is (303)297-4433. The examiner can normally be reached Monday - Friday, 8:30 - 4:30 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu can be reached at (571) 272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTOPHER B WEHRLY/Primary Examiner, Art Unit 3611
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