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 .
Status of Claims
This office action is in response to continued examination under 37 CFR 1.114 filed on 05/12/2026. Claims 1, 4-7, 9-12, 14-20 are pending; claims 1, 12, 14-19 have been amended; claims 2-3, 8, 13 are canceled.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/12/2026 has been entered.
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 15-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 15 recites “the housing not comprising a second cover positioned on another side of the respective transmission relative to the first cover; wherein the first transmission and second transmission do not include a third helical gear and does not include a second planetary gearset; and wherein the first transmission and second transmission do not include a second synchronizer and does not include an intermediate shaft.” The negative limitation lacks corresponding enabling disclosure in view of Wands factors: (1) providing existence of working examples: of any transmission that satisfies claim 15 limitation by which structures are required or optional; (2) nature of invention: a person of ordinary skill in the art how to design a working transmission with absence of the components; (3) amount of direction provided by the inventors: While the specification provides minimal direction regarding the scope of claim 15’s limitation (see ¶[0077]; [0080]). However, these paragraphs from the specification do not provide direction on what other components may be present or absent while still meet scope the claim; whether transmission with entirely different architecture (e.g. different housing shape, different motor arrangement) that also lack the excluded components are enabled. Taking these Wands factor into account, one of ordinary skill in the art could not make and use the claimed invention without exercising undue experiment.
Claim 16 recites “wherein the first transmission does not include any planetary gearset systems or any synchronizers.” The negative limitation lacks corresponding enabling disclosure in view of Wands factors: (1) breath of the claim: one skill in the art cannot determine which of infinite possible transmission configurations that lack planetary gears and synchronizers are intended to fall within the scope of the claim; (2) nature of invention: a person of ordinary skill in the art how to design a working transmission with absence of the components; (3) amount of direction provided by the inventors: While the specification provides minimal direction regarding the scope of claim 16’s limitation (see ¶[0076]). However, the paragraph from the specification does not provide direction on what other components may be present or absent while still meet scope the claim; how to achieve multi-speed and multi-reduction functionality without planetary gearsets and synchronizers. Taking these Wands factor into account, one of ordinary skill in the art could not make and use the claimed invention without exercising undue experiment.
Claim 17 recites “the second transmission and the third transmission further comprise: the input shaft and do not include the output shaft”. The negative limitation lacks corresponding enabling disclosure in view of Wands factors: (1) breath of the claim: one skill in the art cannot determine which of infinite possible transmission configurations that lack output shaft are intended to fall within the scope of the claim; (2) nature of invention: a person of ordinary skill in the art how to design a working transmission with absence of the components; (3) amount of direction provided by the inventors: While the specification provides minimal direction regarding the scope of claim 17’s limitation (see ¶[0074]). However, the paragraph from the specification does not provide direction on what functional requirement substitutes for an output shaft; how to achieve multi-speed and multi-reduction functionality without an output shaft. Taking these Wands factor into account, one of ordinary skill in the art could not make and use the claimed invention without exercising undue experiment.
The dependent claims are also rejected due to their dependency from claim 17.
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, 4-7, 9-12, 14-20 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 and 12 recites “top half of the multi-speed and multi-reduction electric axle system”; “bottom half of the multi-speed and multi-reduction electric axle system”. The top half and bottom half are not defined in the claim or specification. It is unclear where boundary between “top half” and “bottom half” lies.
Claim 14 recites “A line of axle systems, comprising different arrangements of a multi-speed and multi-reduction axle electric into: a first transmission, a second transmission, and a third transmission, each of the first transmission, the second transmission, and the third transmission”. It is not clear whether the claim was directed to (1) different arrangements of electric axle are incorporated into three transmissions or (2) multi-speed and multi-reduction axle is divided into three transmissions or (3) three transmissions are alternative arrangements of a single axle system.
Claim 14 recites “neither of the first helical gear and the second helical gear is directly coupled to the input shaft”. The specification ¶[0074] and Fig.8 disclose a first transmission 801 includes an input shaft 806, output shaft 808, first helical gear 812 coupled to the output shaft 808 via splines; and the input shaft 806 being coupled to an output shaft 808. Thereof, it is unclear whether “directly coupled” excludes any intermediate members or permits indirectly coupled (via intermediate members).
Claim 15 and 19 “the electric motor being positioned in the top half of the respective transmission; the electric motor not being positioned in the bottom half of the respective transmission”. The top half and bottom half are not defined in the claim or specification. It is unclear where boundary between “top half” and “bottom half” lies.
Claim 15 recites “the housing not comprising a second cover positioned on another side of the respective transmission relative to the first cover; wherein the first transmission and second transmission do not include a third helical gear and does not include a second planetary gearset; and wherein the first transmission and second transmission do not include a second synchronizer and does not include an intermediate shaft.”. From the specification, “second cover, third helical gear, second planetary gearset, second synchronizer, intermediate shaft” refers to structure associate with third transmission, and first and second transmission does not disclose second cover, third helical gear, second planetary gearset, second synchronizer, intermediate shaft, see ¶[0076]-[0077]. Thus negative limitation causes confusion and introduces uncertainty as it is claimed the limitation by excluding what the inventors did not invent rather than distinctly and particularly pointing out what they did invent and one of ordinary skill in the art cannot determine with reasonable whether infringement is avoid by omission of components or whether the claim is directed to specific structural configuration are excluded. See MPEP 2173.05(i).
Claim 16 recites “wherein the first transmission does not include any planetary gearset systems or any synchronizers.” From the specification, the planetary gearset and synchronizers are associated with second and third transmission. Thus negative limitation causes confusion and introduces uncertainty as it is claimed the limitation by excluding what the inventors did not invent rather than distinctly and particularly pointing out what they did invent and one of ordinary skill in the art cannot determine with reasonable whether infringement is avoid by omission of components or whether the claim is directed to specific structural configuration are excluded. See MPEP 2173.05(i).
Claim 17 recites “the second transmission and the third transmission further comprise: the input shaft and do not include the output shaft”. The negative limitation causes confusion and introduces uncertainty as it is claimed the limitation by excluding what the inventors did not invent rather than distinctly and particularly pointing out what they did invent and one of ordinary skill in the art cannot determine with reasonable whether infringement is avoid by omission of components or whether the claim is directed to specific structural configuration are excluded. See MPEP 2173.05(i).
The dependent claims are also rejected due to their dependency from claims 1 and 17
Allowable Subject Matter
Claims 1, 4-7, 9-12 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Response to Arguments/Amendment
The previous rejections with respect to claim 14 under 112 (a) have been considered and persuasive in light of the amendment to claim 14 and Fig.8. However, the amendment raises a new 112 (b) issue (see rejection above).
The previous rejections with respect to claims 15- 17 under 35 USC 112 (a) are maintained. Even though the claims 15-17 have support for the negative limitation that being claimed in the specification but it does not cure the enablement issues (See rejections above).
The previous rejections with respect to claims 15- 17 under 35 USC 112 (b) are maintained because the negative limitation causes confusion and introduces uncertainty (see rejections above).
The previous rejections with respect to claim 18 have been considered and persuasive in light of the amendment to claim 18.
With respect to the previous rejection of claim 12 under 35 USC 102 have been withdrawn in light of incorporable allowable subject matter of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lillian T Nguyen whose telephone number is (571)270-5404. The examiner can normally be reached Monday-Friday, 8:30am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ernesto Suarez can be reached at (571)270-5565. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LILLIAN T NGUYEN/ Examiner, Art Unit 3655A
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