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 .
DETAILED ACTION
This action is responsive to the communications filed 10/18/2024 (claimed foreign priority date 11/08/2023):
Claims 1-8 have been examined.
Claims 7-8 have been objected to.
Legend: “Under BRI” = “under broadest reasonable interpretation;”
“[Prior Art/Analogous/Non-Analogous Art Reference] discloses through the invention” means “See/read entire document;” Paragraph [No..] = e.g., Para [0005] = paragraph 5; P = page, e.g., p4 = page 4; C = column, e.g. c3 = column 3;
L = line, e.g., l25 = line 25; l25-36 = lines 25 through 36.
Claim Rejections - 35 USC § 112
1. 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.
1.1 Claims 1-8 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
1.1.1 Claim 1 recites the limitation/feature “switching a gear ratio manually by a user” that is not described or supported in the specification in order to understand how it is physically being executed/performed/established/achieved/made/done, etc. The specification merely repeats claim language in several paragraphs, e.g., abstract, Para [0002, 0006, 0097], without providing any evidence for or explanation about how it is physically being executed/performed/established/achieved/made/done, etc. Clarification and/or appropriate correction is required.
For the purpose of this examination, in view of the specification, and under BRI, the term “gear ratio” is not given a patentable weight, withdrawn from consideration, and will be interpreted as a “transmission gear.”
Hence, claim 1 will be interpreted as the following:
“1. A vehicle, comprising:
a transmission that is provided between a power source and drive wheels, and that is configured to switch a transmission gear
a sound generator that is configured to artificially generate a sound when the vehicle is traveling, wherein
the sound generator includes at least a processor and a speaker, and
the processor is configured to execute at least one of raising a frequency of the sound the higher the transmission gear transmission gear
1.1.2 Claims 2-8 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, because of their dependencies on rejected independent claim 1, and for failing to cure the deficiencies listed above.
2. 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.
2.1 Claims 1-8 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.
2.1.1 Claim 1 recites the limitation/feature “switching a gear ratio manually by a user,” which is unclear what it is and/or how it is physically being executed/performed/established/achieved/made/done, etc., which renders the claim indefinite.
Examiner find that is well known in the art that “a gear ratio” is a derived/calculated number, e.g., “a gear ratio is the relationship between two meshing gears, calculated by dividing the teeth on the driven (output) gear by the teeth on the driver (input) gear, determining how speed and torque are exchanged to provide more force (higher ratio/more torque) or more speed/efficiency (lower ratio/less torque) in systems like cars or machinery,” (https://www.google.com/search?q=gear+ratio, last accessed 01/16/2026), not something physical, and therefore it is unclear how it is practically doable to manually switch a derived/calculated relationship between two meshing gears, calculated by dividing the teeth on the driven (output) gear by the teeth on the driver (input) gear, determining how speed and torque are exchanged, which renders the claim indefinite. Clarification and/or appropriate correction is required.
Additionally, this limitation/feature is not described or supported in the specification in order to understand how it is physically being executed/performed/established/achieved/made/done, etc., which renders the claim indefinite.
For the purpose of this examination, in view of the specification, and under BRI, the term “gear ratio” is not given a patentable weight, withdrawn from consideration, and will be interpreted as a “transmission gear.”
Hence, claim 1 will be interpreted as the following:
“1. A vehicle, comprising:
a transmission that is provided between a power source and drive wheels, and that is configured to switch a transmission gear
a sound generator that is configured to artificially generate a sound when the vehicle is traveling, wherein
the sound generator includes at least a processor and a speaker, and
the processor is configured to execute at least one of raising a frequency of the sound the higher the transmission gear transmission gear
2.1.2 Claims 2-8 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, because of their dependencies on rejected independent claim 1, and for failing to cure the deficiencies listed above.
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.
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.
1. Claims 1 and 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over PALERMO (US20250087201).
As per claim 1, PALERMO discloses through the invention (see entire document), a vehicle (fig. 1), comprising:
a transmission that is provided between a power source and drive wheels (fig. 1, Para [0068-0069] – teaching mechanical element 9 as an electric transmission between electric motor 4 and wheels 3), and that is configured to switch a gear ratio manually by a user (fig. 1-2, abstract, Para [0040-0042, 0049-0052] – teaching driver DR that selects a virtual gear among a plurality of virtual gears 18 and shifts from one virtual gear to another while driving; the gear shifting system 19 that comprises an interface system 17; drive device 13 as a right paddle 20 (or right lever) and the drive device 14 as a left paddle 21 (or left lever) of a gear shift control assembly 22 of a known type); and
a sound generator that is configured to artificially generate a sound when the vehicle is traveling (fig. 1-2, Para [0054-0057] – teaching acoustic system 6 that comprises at least one reproduction device 7, which is configured to generate a sound S associable with a gear shift and to spread the sound itself towards the passenger compartment 5 and/or towards the outside of the vehicle 1; also audible from outside the passenger compartment 5, in particular near/in the vicinity of the road vehicle 1; the system 6 that provides speakers (or resonant elements, as described below) external to the passenger compartment 5, for example at a platform or exhaust pipe), wherein
the sound generator includes at least a processor and a speaker (fig. 1-3, Para [0056-0057, 0138, 0146] – teaching system 6 that provides speakers; speakers 25, FSG acoustic generator; acoustic system 6 that comprises a stereo system 24, which in turn comprises a plurality of speakers 25 installed within the passenger compartment 5), and
the processor is configured to execute at least one of raising a frequency of the sound the higher the gear ratio is, and increasing a pressure of the sound the higher the gear ratio is (fig. 4-6, Para [0080-0093] – teaching the sound S, and therefore the acoustical signal that varies as a function of the engaged gear; in particular, lower gears that correspond to a sound S at lower frequencies, while higher gears correspond to a sound S at higher frequencies, therefore more high-pitched; exciting the reproduction device 7 to generate a decreasing sound ramp; in particular, the sound ramp is adjusted according to the virtual gear that the driver wishes to engage; in particular, the sound S as being more intense and high-pitched as the gears increase, and vice versa).
PALERMO does not explicitly disclose thorough the invention, or is missing sound generator that includes at least a processor and a speaker.
However, it was known in the art at the time of Applicant's filing that sound generator that includes at least a processor and a speaker, such as a vehicle acoustic system that has the function of generating a sound while driving was a common thing.
Therefore, it would have been obvious to one of ordinary skill in the art, who is also a person of ordinary creativity, not an automation, before the effective filing date of the claimed invention, to modify PALERMO teaching such that it comprises a sound generator that includes at least a processor and a speaker. The result of such a combination would have been predictable and would not change the operation of PALERMO. A person of ordinary skill, ordinary creativity would have been motivated to do so, with a reasonable expectation of success, for the purpose of and/or in order to provide reliable and immediate feedback to the driver of the road vehicle, who, despite driving a car provided with an electric motor and therefore noiseless, can understand the vehicular conditions, in this case the shift from one gear to another, using his or her own hearing (see entire PALERMO document, particularly Para [0111]).
As per claim 3, PALERMO further discloses through the invention (see entire document), executing at least one of raising the frequency of the sound the greater an accelerator operation amount is, and increasing the pressure of the sound the greater the accelerator operation amount is (fig. 1-3, Para [0043-0044, 0080-0093]).
As per claim 4, PALERMO further discloses through the invention (see entire document), power source as an electric motor (fig. 1, 3, Para [00024, 0032-0043] – teaching electric motor 4).
As per claim 5, PALERMO further discloses through the invention (see entire document), a pseudo shifter that is configured to select one virtual shift position out of a plurality of virtual shift positions, wherein the processor is configured to execute at least one of raising the frequency of the sound the lower a stage of the virtual shift position selected by the pseudo shifter is, and increasing the pressure of the sound the lower the stage of the virtual shift position selected by the pseudo shifter is (fig. 1-3, abstract, numerous paragraphs, e.g., Para [0040-0047, 0055, 0060, 0080-0093] – teaching driver selecting one of a plurality of virtual gears and switching from one virtual gear to another while driving; gear shifting system 19 that comprises an interface system 17).
As per claim 6, PALERMO further discloses through the invention (see entire document), a motor processor configured to change a torque of the electric motor in accordance with the virtual shift position selected by the pseudo shifter, a vehicle speed of the vehicle, and an accelerator operation amount, wherein the motor processor is configured to increase the torque at a same vehicle speed and a same accelerator operation amount, the lower the stage of the virtual shift position selected by the pseudo shifter is, and limit a vehicle speed range at which the virtual shift position is selectable to a lower speed, the lower the stage of the virtual shift position selected by the pseudo shifter is (fig. 1-3, Para [0032, 0041-0043, 0066, 0080-0093] – teaching selection of the virtual gear by the driver DR influences (limits) the drive torque delivered by the electric motor 4 in a known manner; each of the virtual gears 18 that determines a limit profile of drive torque deliverable by the electric motor 4 to the wheels 2, 3 as the velocity of the road vehicle 1 along the normal forward direction varies).
2. Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over PALERMO in view of Peachey (US20120106748).
As per claim 2, PALERMO does not explicitly disclose thorough the invention, or is missing executing at least one of raising the frequency of the sound the higher a vehicle speed of the vehicle is, and increasing the pressure of the sound the higher the vehicle speed is.
However, Peachey teaches these limitations/features through the invention (see entire document), particularly in Para [0007, 0020-0023, 0028, 0031, 0033-0034, 0038, 0040-0059] – teaching generating sounds based on various operating conditions of the vehicle 100, changes in vehicle gear shifting, speed particularly.
It would have been obvious to one of ordinary skill in the art, who is also a person of ordinary creativity, not an automation, before the effective filing date of the claimed invention, to modify the teaching of PALERMO by incorporating, applying and utilizing the above steps, technique and features as taught by Peachey, who is in the same field of endeavor. A person of ordinary skill, ordinary creativity would have been motivated to do so, with a reasonable expectation of success, for the purpose of and/or in order to detect a change in the operating conditions of the vehicle and select a different sound based on the detected change in vehicle speed, vehicle throttle position, or both (see entire Peachey document, particularly Para [0007]).
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
1. Claims 1-8 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12522084. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
it is obvious that narrower claim 1 of U.S. Patent No. 12522084 covers the broader claim combination of broader claims 1 and 7-8 of the instant application.
2. Claims 2-8 rejected under the nonstatutory double patenting rejections, because of their dependencies on rejected independent claim 1.
3. Claims 1-8 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 6 of copending Application No. US18/903,692 (Pub. No.: US20250145146). Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
it is obvious that narrower claim combination of narrower claims 1, 4 and 6 of copending Application No. US18/903,692 (Pub. No.: US20250145146) covers the broader claim combination of broader claims 1 and 7-8 of the instant application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
4. Claims 2-8 provisionally rejected under the provisional nonstatutory double patenting rejections, because of their dependencies on rejected independent claim 1.
Allowable Subject Matter
1. Claims 7-8 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
2. Claims 7-8 would be allowable if rewritten to overcome the 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph rejections, the 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph rejections, the nonstatutory double patenting rejections, and the provisional nonstatutory double patenting rejections set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
RELEVANT PRIOR ART THAT WAS CITED BUT NOT APPLIED
The following relevant prior art references that were found, by the Examiner while performing initial and/or additional search, cited but not applied:
DOU’ (US20220063494) – (see entire DUO’ document, particularly abstract – teaching a sound and performance emulator for an electric propulsion vehicle with a first sensor to emit a clutch signal relative to the position of a clutch of the electric propulsion vehicle; a second sensor to emit a gear signal relative to the position of a gear-switch of the electric propulsion vehicle; a control unit which receives an acceleration signal relating to an accelerator position of the electric propulsion vehicle; a vehicle speed signal and/or an engine revolutions signal relating to the engine revolutions of the electric motor; the clutch signal; and the gear signal; the control unit that calculates a simulated engine revolutions value and a simulated gear inserted value of a simulated endothermic combustion vehicle; the control unit that provides a requested simulated torque value and/or an output throttle signal to be sent to the electric propulsion vehicle to control it).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Primary Examiner YURI KAN, P.E., whose phone number is 571- 270-3978. The examiner can normally be reached on Monday – Friday.
If attempts to reach the examiner by phone are unsuccessful, you may contact the examiner's supervisor, Mr. Jelani Smith, who can be reached on 571-270-3969. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/YURI KAN, P.E./Primary Examiner, Art Unit 3662