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 in the reply filed on 5/28/2026 is acknowledged.
Claims 10-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 5/28/2026.
Claim Objections
Per MPEP § 714 and 37 CFR 1.121, amendments to the claims should be shown by the following. “The text of any added subject matter must be shown by underlining the added text [(e.g. example added text)]. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters [(e.g. ]. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived [(e.g. to delete a period [[.]], etc.)].” Similarly, for amendments to the specification, “The full text of any replacement paragraph with markings to show all the changes relative to the previous version of the paragraph. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived”.
The claims filed 5/28/2026 contain changes to the claims that are not marked up (i.e. additions that are not underlined, and deletions that are not shown in struck-thru text). For example, the claims as filed on 5/28/2026, for claim 1 changes “at least one first shift actuator and second shift actuator” to “a first shift actuator and second shift actuator” without indicating any change was made. Likewise, the amendment changes the dependency of several claims, such as claim 6 and claims 11-18 without indicating any change was made. These are examples of unmarked changes and not exhaustive of all unmarked changes. The Examiner also notes that the Applicant appears to have, in some instances, picked versions of claims from two different claim sets filed on 7/17/2024.
As a one-time courtesy, the Examiner has examined the claims as filed on 5/28/2026 despite unmarked changes having been made, since the claims have not been previously examined on the merits. The Applicant is remined to in the future mark-up all changes as required by MPEP § 714 and CFR 1.121, and the Examiner notes that failure to do so may result in a notice of non-compliant amendment.
Claim Rejections - 35 USC § 112
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.
Claim 6 recites the limitations “the selector actuator”, “the first rail selector”, “the second rail selector”, “the first radial position”, and “the second radial position” in lines 1-4. There is insufficient antecedent basis for this limitation in the claim. Note that claim 6 depends upon itself (see 35 USC 112(d) rejection hereinbelow).
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6, as filed in the latest set of claims filed 5/28/2026, depends upon itself, i.e. claim 6 depends upon claim 6. This is not a proper dependent form since the claim does not depend upon a claim previously set forth but rather depends upon itself. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Claim 6 cannot be examined further on the merits since it depends upon itself.
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) 1-5 and 8-9 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Muramatsu (JPS61241554, cited by Applicant).
Re claims 1-5 and 8-9
The current application is related to PCT/IB2022/050191 and the current claims are substantially similar in scope to the PCT claims. The examiner adopts, and incorporates herein by reference, the explanations of the closest prior art Muramatsu (JPS61241554) as set forth in the PCT (see the copy of the PCT/ISA/237 filed in this current application on 5/17/2024).
(See MPEP 1893.03(e)(II) which permits the examiner to adopt any portion or all of any report on patentability of the IPEA or ISA that would be relevant to U.S. practice, e.g., explanations of prior art, etc.)
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Gunther (DE102004052804, cited by Applicant).
Re claim 1
The current application is related to PCT/IB2022/050191 and the current claims are substantially similar in scope to the PCT claims. The examiner adopts, and incorporates herein by reference, the explanations of the closest prior art Gunther (DE102004052804) as set forth in the PCT (see the copy of the PCT/ISA/237 filed in this current application on 5/17/2024).
(See MPEP 1893.03(e)(II) which permits the examiner to adopt any portion or all of any report on patentability of the IPEA or ISA that would be relevant to U.S. practice, e.g., explanations of prior art, etc.)
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.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Gunther (DE102004052804, cited by Applicant).
Re claim 7
Gunther discloses all claim dependency limitations (see above and see the copy of the PCT/ISA/237 filed in this current application on 5/17/2024), and further discloses the first arm (arms 12, 13) is maintained in the detent (detents 16, 17) of the shaft (shafts 10, 11) of the selector actuator as the shift actuator moves between the plurality of positions along the shift axis, but is silent to wherein the first arm (arms 12, 13) of each of the rail selector has a first width corresponding to a stroke length of the shift actuator.
In Gardnerv.TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. See MPEP 2144.04.IV.A
It would have been obvious to a person having ordinary skill in the art at the time of the invention to modify the device of Gunther such that he first arm of each of the rail selector has a first width corresponding to a stroke length of the shift actuator, as held by the courts, since the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and since device having the claimed relative dimensions would not perform differently than the prior art device.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Enami (US2015/0075308) discloses a vehicle speed change apparatus having selector actuators (30a, 30b) and first and second shift actuators (31a, 31b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY T PRATHER whose telephone number is (571)270-5412. The examiner can normally be reached Monday-Thursday 9 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at 571-270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY T PRATHER/
Examiner, Art Unit 3618
/MINNAH L SEOH/Supervisory Patent Examiner, Art Unit 3618
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