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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 16, 22, 24, and 30 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over copending Application No. 18/880,530 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other, as detailed below:
Claims 16 and 30 are unpatentable over claims 17 and 28, respectively, of the reference application which generally teaches the features of claims 16 and 30- e.g.:
{A drive device for an electric bicycle [claims 16 and 17]/ An electric bicycle comprising a drive device [claims 30 and 28]} comprising an electric motor, a shaft, and a redirecting gearbox having first and second gear elements.
Reference claims 17 and 28 do not specifically claim a coupling between the shaft and the first gear element or limiting an axial movement of the first and second gear elements but It would have been obvious to a person of ordinary skill in the art to provide a coupling between a gear and the shaft it is mounted to and to limit the relative movement between coupled gears as is old and well known in the art; in fact a person having ordinary skill in the art would recognize that these features are not merely advantageous to a drive device but are likely necessary for it to properly function.
Claims 22 and 24 are unpatentable over reference claim 27 which teaches all claimed features.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 16-22, 24-27, and 29-30 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by Chang (US-6230586-B1).
Regarding Claims 16 and 30, (having similar limitations, as discussed below), Chang teaches a {drive device for an electric bicycle [claim 16]/ electric bicycle [claim 30]} (Abstract and Fig. 1), {the drive device comprising [16]/ comprising [30]}:
{an electric motor (Motor 51, Fig. 1) [30 only]};
a shaft (Rotatable Tube 10, Fig. 1);
a redirecting gearbox (Speed Reduction Device 50, Fig. 1) for coupling with an electric motor (Motor 51, Fig. 1) and said shaft (10) so that a torque is transmittable from the electric motor (51) via said redirecting gearbox (50) to said shaft (10);
said redirecting gearbox (50) having a first gear element (Annular Gear 11, Fig. 1) rotatable about a first axis (the axis of Annular Gear 11 and Rotatable Tube 10) and a second gear element (Bevel Gear 54, Fig. 1) coupled to said first gear element (11), said second gear element (54) being rotatable about a second axis (the axis of Bevel Gear 54 and Output Shaft 501 of Motor 51, Fig. 1) running at an angle to the first axis;
the drive device being configured to transmit a torque from said first gear element (11) to said shaft (11) via a coupling (Unidirectional Means 30, Fig. 1) between said first gear element (11) and said shaft (10);
the drive device being further configured to rotate said shaft (10) in a first rotational direction relative to said first gear element (as understood by the description of the function of the Unidirectional Means 30, Col. 2 Lines 48-67); and,
said first gear element (11) being axially displaceable relative to said second gear element (54), parallel to the first axis, within predetermined limits, wherein said first gear element (11) and said second gear element (54) remain coupled to one another within the predetermined limits (Annular Gear 11 being illustrated in Fig. 1 as being axially retained on Rotatable Tube 10 via various bearings and shoulders it is understood to have a limited axial movement relative to Bevel Gear 54, some displacement being understood as a result of manufacturing tolerances and clearances); and
{said electric motor (51) being coupled to the redirecting gearbox (50) so that the torque of said electric motor (51) is transmitted to said first gear element (11) via said second gear element (as understood by Fig. 1) [30 only]}.
Regarding Claim 17, Chang further teaches that:
an axial movement of said first gear element (11) is limited in a first axial (right, Fig. 1) direction by said second gear element (54) and in an opposite, second axial direction (left) by a limiter (“LMT”, Fig. 1 Annotated); and,
said limiter (LMT) is axially fixed to at least one of said shaft (10) and said second gear element (Limiter LMT being axially fixed to Rotatable Tube 10 via Unidirectional Means 30).
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Regarding Claim 18, Chang further teaches that the drive device is configured such that, when a torque is transmitted from said second gear element (54) to said first gear element (11), an axial force acts on said first gear element (11) and this axial force is dissipated via said limiter (LMT) onto said shaft (10) or an element fixed axially to said shaft (bevel gears producing such as force when transmitting torque, as is well known to a person having ordinary skill in the art, and Limiter LMT being disposed such that it would transmit said force to Rotatable Tube 10).
Regarding Claim 19, Chang further teaches:
at least one bearing (“BRG” Fig. 1 Annotated); and,
said first gear element (11) being mounted to said shaft (10) via said at least one bearing (as illustrated in Fig. 1 Annotated).
Regarding Claim 20, Chang further teaches that an interface (Pawl 35, Figs. 3 and 4) of said coupling (30) between said first gear element (11) and said shaft (10) is arranged axially between two of said at least one bearing (Pawl 35 being arranged between Bearings BRG as understood by Figs. 1, 3 and 4- noting the section line of Fig. 4 being disposed between Bearings BRG in Fig. 1).
Regarding Claim 21, Chang further teaches that said coupling (30) between said first gear element (11) and said shaft (10) is a freewheel coupling (being described as a unidirectional means and illustrated as a freewheeling ratchet mechanism in Figs. 3-5).
Regarding Claim 22, Chang further teaches that said redirecting gearbox (50) is a bevel gearbox (comprising Bevel Gear 54), in which said first gear element (11) is a ring gear and said second gear element is a bevel pinion (as illustrated in Fig. 1).
Regarding Claim 24, Chang further teaches that said shaft (10) is a chainring shaft (Sprockets 24 being disposed on Rotatable Tube 10 as illustrated in Fig. 1).
Regarding Claim 25, Chang further teaches that:
said limiter (LMT) is a stop surface (Limiter LMT having a Stop Surface “SURF”, Fig. 1 Annotated);
a further stop surface (“STS2”, Fig. 1 Annotated) is assigned to said first gear element (11) and is axially fixed to it (Further Stop Surface STS2 being integrated into Annular Gear 11);
said stop surface (LMT/SURF) and said further stop surface (STS2) lie opposite each other in an axial direction (being disposed across Stop Surface STS2), overlap radially (up-down, Fig. 1) and azimuthally (circumferentially about Rotatable Tube 10) and face each other (as illustrated in Fig. 1 Annotated); and,
said stop surface (LMT/SURF) and said further stop surface (STS2) are arranged to strike against each other to limit an axial movement of said first gear element (Limiter LMT and Further Stop Surface STS2 contacting each other at Stop Surface SURF such that an axial movement of Annular Gear 11 is limited, Fig. 1 Annotated).
Regarding Claim 26, Chang further teaches that said stop surface (SURF) and said further stop surface (STS2) are positioned axially between said second gear element (54) and an interface (“IN2”, Fig. 1 Annotated) of said coupling (30) between said first gear element (11) and said shaft (Stop Surface SURF being disposed axially between Bevel Gear 54 and Interface IF2 of Unidirectional Means 30, Fig. 1 Annotated).
Regarding Claim 27, Chang further teaches that an area in which said stop surface (SURF) and said further stop surface (STS2) strike against one another is radially offset relative to an interface (IF2) of said coupling (30) between said first gear element (11) and said shaft (Stop Surface SURF being disposed at a further radial distance than Interface IF2 of Unidirectional Means 30, Fig. 1 Annotated).
Regarding Claim 29, Chang further teaches that:
said first gear element (11) at least partially radially surrounds said shaft (Annular Gear 11 surrounding Rotatable Tube 10, Fig. 1); and,
an interface (Pawl 35, Figs. 3 and 4) of said coupling (30) between said first gear element (11) and said shaft (10) is arranged in a radial direction (up-down, Fig. 1) between said shaft (10) and said first gear element (11) and is arranged
overlapping in an axial direction (left-right, Fig. 1) with said first gear element (11) and said shaft (Pawl 35 overlapping Annular Gear 11 and Rotatable Tube 10, Fig. 1).
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 23 is rejected under 35 U.S.C. 103 as being unpatentable over Chang in view of MachineDesign (“What’s the Difference…”).
Regarding Claim 23, Chang does not teach a specific transmission ratio.
MachineDesign teaches, in a related article discussing bevel gears (Title), that a normal gear ratio range for bevel gears is 3:2 (1.5:1) to 5:1 (section: “Bevel Gears”, page 3).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention, to modify Chang’s drive device such that the transmission ratio was between 4 and 6 as suggested by MachineDesign. A person of ordinary skill in the art would have appreciated the advantage of selecting a ratio within a commonly used range that would beneficially provide a predictable behavior for the gear system.
To the extent that it might be argued that Chang’s drive device as modified above operates substantially in the same range of transmission ratios as claimed, but it does not expressly cover the entirety of the claimed range of transmission ratios, a person of ordinary skill in the art would have recognized that the transmission ratio is directly correlated to the bike rider’s ability to balance pedaling speed and physical effort, which is a desirable characteristic of a drive device for an electric bicycle (as a “result effective variable”, per MPEP 2143 and 2144.05-II-B). Thus, it would have been obvious to one having ordinary skill in the art at the time the application was filed, to modify Chang’s modified drive device to specifically have the claimed transmission ratio in its entirety, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
Claim 28 is rejected under 35 U.S.C. 103 as being unpatentable over Chang in view of Dengal (“Oil, grease, or dry: What is the best lubricant…”).
Regarding Claim 28, Chang does not specifically teach metallic stop surfaces or a lubricant, however metallic gearbox parts and lubrication are old and well known in the art. Dengal teaches, in a related article discussing lubrication of gears, the use of metal gears and lubricants (last paragraph, page 1).
It would have been obvious to a person of ordinary skill in the art to use metallic stop surfaces and lubrication as is old and well known in the art and suggested by Dengal, in order to make a more robust and long lasting drive device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYLER JAY STANLEY whose telephone number is (571)272-3329. The examiner can normally be reached Monday- Friday 8:30-5:30 ET.
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/TYLER JAY STANLEY/Examiner, Art Unit 3611 /VALENTIN NEACSU, Ph.D./Supervisory Patent Examiner, Art Unit 3611
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