DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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”) are 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.
Regarding claims 5-7, although the term “means” is used, it is not interpreted
as a 112(f) limitation, because “means” is equivalent to “using” or “through” or “via”.
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.
Claims 2-5 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 2, line 4 recites the limitation "said drive axle". There is insufficient antecedent basis for this limitation in the claim.
Claims 3-5 are further rejected as indefinite, since they are dependents from a rejected
parent claim (details above).
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 1-4, 6, 8, and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmid DE 102021131560 B3 (page/line numbering used for foreign references below corresponds to the machine-translation preceding the original patent, as attached to the present Office Action – note page numbers of the translation are marked as TP-1, TP-2, etc.).
Regarding independent claim 1, Schmid discloses [a kit for electric conversion of a combustion motorcycle,] (Page 1, lines 11-15; Page 4, lines 38-45) said combustion motorcycle comprising;
[an internal combustion engine 1 provided with a bedplate which defines:
a chamber 11 adapted to house a crankshaft assembly,] (Annotated Fig. 1D below; As shown in the annotation of Fig. 1D, Schmid illustrates an internal combustion engine 1 which defines a chamber that houses the crankshaft assembly.); and
[a connecting portion 5 adapted to connect to a cylinder;] (Annotated Fig. 1D below; Page 9, lines 3-15; As shown in the annotation of Fig. 1D, Schmid illustrates a connecting portion 5 adapted to connect to a cylinder.)
[an electric motor 2 adapted to be associated with said connecting portion,] (Fig. 1D; Page 9, lines 3-15)
[a drive shaft 4 configured to be housed at least partly in said chamber and to be connected to a mechanical transmission of the combustion motorcycle,] (Annotated Fig. 1D below; Page 9, lines 3-15; As shown in the annotation of Fig. 1D, Schmid illustrates a drive shaft 4 configured to be housed at least partly in said chamber 11 and to be connected to a mechanical transmission of the combustion motorcycle.) and
[a transmission system adapted to be positioned between said electric motor and said drive shaft and configured to transmit a driving torque from said electric motor to said drive shaft.] (Annotated Fig. 1D; Page 10, lines 8-16)
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Annotated Fig. 1D of Schmid
Regarding claim 2, Schmid further discloses wherein:
[said electric motor 2 comprises a rotating drive axis,] (Fig. 1D; Page 10, lines 8-16) and
[said transmission system is configured to transform a rotary motion of said drive axle 21 into a rotary motion of said drive shaft.] (Annotated Fig. 1D above; Page 10, lines 8-16)
Regarding claim 3, Schmid further discloses [wherein said transmission system comprises at least one gear 3, 43 adapted to be positioned between said drive axle 21 and said drive shaft 4.] (Annotated Fig. 1D above; Page 10, lines 8-16)
Regarding claim 4, Schmid further discloses [wherein said gear comprises a first gear 3 wheel associated with said drive axle 21 and a second gear wheel 43 associated with said drive shaft 4, said gear wheels being configured to mesh with each other.] (Annotated Fig. 1D above; Page 10, lines 8-16)
Regarding claim 6, Schmid further discloses [connecting means 51, 52 adapted to be arranged between said connecting portion 5 and said electric motor 2 and configured to attach the electric motor to said connecting portion.] (Fig. 2; Page 10, lines 17-27)
Regarding claim 8, Schmid further discloses [a method for electric conversion of a combustion motorcycle,] (Page 1, lines 11-15; Page 4, lines 38-45) comprising:
[setting up a motorcycle provided with an internal combustion engine 1] (Fig. 1D; Page 1, lines 11-15; Page 4, lines 38-45) comprising:
[a chamber 11 adapted to house a drive shaft assembly 4,] (Annotated Fig. 1D above; As shown in the annotation of Fig. 1D, Schmid illustrates an internal combustion engine 1 which defines a chamber that houses the crankshaft assembly.) and
[a connecting portion 5 to a cylinder;] (Annotated Fig. 1D above; Page 9, lines 3-15; As shown in the annotation of Fig. 1D, Schmid illustrates a connecting portion 5 adapted to connect to a cylinder.)
[setting up the kit accommodating said drive shaft in said chamber;] (Fig. 1D; Page 9, lines 16-31)
[connecting said electric motor 2 to said connecting portion 5;] (Fig. 1D; Page 9, lines 3-15) and
[positioning said transmission system between said electric motor and said drive shaft.] (Annotated Fig. 1D above; Page 10, lines 8-16)
Regarding claim 10, Schmid further discloses [an electric reconverted motorcycle 1000, comprising:
a frame,
at least one wheel associated with said frame in a rotary manner,] (Annotation of Fig. 3 below; As shown in Fig. 3, Schmid illustrates an electric motor vehicle 1000 comprising a frame and at least one wheel associated with the frame in a rotary manner.)
[an internal combustion engine 1 mounted on said frame and provided with a chamber 11 adapted to house a drive shaft assembly 4,] (Annotated Fig. 1D above; As shown in the annotation of Fig. 1D, Schmid illustrates an internal combustion engine 1 which defines a chamber that hoses the drive shaft assembly.) and with [a connecting portion 5 to a cylinder,] (Annotated Fig. 1D above; Page 9, lines 3-15; As shown in the annotation of Fig. 1D, Schmid illustrates a connecting portion 5 adapted to connect to a cylinder.)
[a mechanical transmission positioned between said internal combustion engine and said wheel,] (Annotated Fig. 1D; Page 10, lines 8-16) and
said kit, [wherein said electric motor 2 is connected to said connecting portion,] (Fig. 1D; Page 9, lines 3-15) said [drive shaft is housed in said chamber,] (Annotated Fig. 1D above; As shown in the annotation of Fig. 1D, Schmid illustrates the drive shaft 4 being housed in said chamber 11.) said [transmission system is positioned between said electric motor and said drive shaft, said mechanical transmission is operatively connected to said drive shaft.] (Annotated Fig. 1D; Page 10, lines 8-16)
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 5 is rejected under 35 U.S.C. 103 as being unpatentable over Schmid in view of Bernini IT FI20110054 A1 (page/line numbering used for foreign references below corresponds to the machine-translation preceding the original patent, as attached to the present Office Action – note page numbers of the translation are marked as TP-1, TP-2, etc.).
Regarding claim 5, Schmid does not disclose wherein said gear wheels are configured to couple to each other by means of a bevel gear.
Bernini teaches [wherein said gear wheels are configured to couple to each other by means of a bevel gear 8a, 8b.] (Fig. 1; Page 5, lines 17-19)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to alternatively use the bevel gear configuration of Bernini with the electric conversion kit of Schmid with a reasonable expectation of success because it would allow for the transmission of rotary motion and torque between intersecting shafts while accommodating a change in the direction of power transmission with the available engine packaging, thus providing an efficient and predictable means of coupling the gear wheels in the electric conversion kit.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Schmid in view of Su et al. US 11242107 B2.
Regarding claim 7, Schmid does not disclose a flange element configured to be attached to said electric motor and to said connecting portions.
Su et al. teaches [a flange element configured to be attached to said electric motor and to said connecting portion.] (Annotated Fig. 1 below; As shown in the annotation of Fig. 1 below, Su et al. illustrates a flange element configured to be attached to said electric motor 1 and to said connecting portion 411.)
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Annotated Fig. 1 of Su et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to additionally use the flange element of Su et al. with the electric conversion kit of Schmid with a reasonable expectation of success because it would allow for securely mounting and aligning the electric motor to the connecting portion of the engine while providing a stable mechanical interface for torque transmission, thus improving the ease of assembly and structural integrity of the electric conversion kit.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Schmid.
Regarding claim 9, Schmid further discloses [the internal combustion engine 1;] (Page 9, lines 16-31)
[the drive shaft assembly 4 housed in the chamber 11;] (Annotated Fig. 1D above; As shown in the annotation of Fig. 1D, Schmid illustrates an internal combustion engine 1 which defines a chamber that houses the driveshaft assembly.)
[the cylinder connected to the connecting portion.] (Annotated Fig. 1D above; Page 9, lines 3-15; As shown in the annotation of Fig. 1D, Schmid illustrates a connecting portion 5 adapted to connect to a cylinder.)
Schmid does not explicitly disclose checking whether said internal combustion engine has its own drive shaft assembly housed in said chamber and/or a cylinder connected to said connecting portion, removing said drive shaft assembly if said drive shaft assembly exists, and removing said cylinder if said cylinder exists. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to first check whether the drive shaft assembly (i.e., crankshaft assembly) and/or cylinder are present prior to their removal as part of the electric conversion process, with a reasonable expectation of success, because inspecting the motorcycle to determine whether components requiring removal are present is a routine preparatory step performed before disassembly. Such inspection avoids unnecessary removal operations, accommodates motorcycle that may already be partially disassembled or modified, and improves the efficiency and reliability of the conversion process. Therefore, the inclusion of the checking step would have been an obvious matter of routine engineering practice.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Tamai et al. US 11054001 B1 – comprises an electric drive unit including an electric motor, a differential assembly, and a double-helical gearset positioned between and interconnecting the electric motor and the differential assembly and adapted to transfer rotational motion from the electric motor to the differential assembly, the double-helical gearset including a driving double-helical gear rotationally mounted onto a transfer shaft of the electric motor and including a right-hand helix, a left-hand helix and a gap extending circumferentially between the right-hand helix and the left-hand helix, and a driven double-helical gear rotationally mounted onto a housing of the differential assembly and including a right-hand helix, a left-hand helix and a gap extending circumferentially between the right-hand helix and the left-hand helix, and a park gear positioned within the gap between the right hand helix and the left hand helix of one of the driving double-helical gear and the driven double-helical gear, wherein one of the driving double-helical gear and the driven double-helical gear is axially moveable.
Heilfort US 10350985 B2 – comprises a drive train of a hybrid motor vehicle that has an internal combustion engine, at least one first electric motor, at least a first clutch arrangement, at least one gear assembly, a storage arrangement and at least one auxiliary unit, such as an air conditioning compressor. The internal combustion engine is connected drivingly to a first drive axle via the clutch arrangement and the gear assembly, and the first electric motor is connected drivingly to a second drive axle and to the storage arrangement and/or the auxiliary unit. The first electric motor has a rotor shaft with a first end drivingly connected to the second drive axle by a first switching unit and a second end drivingly connected to a crankshaft of the internal combustion engine by a second switching unit.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohamed Medani whose telephone number is (703)756-1917. The examiner can normally be reached Monday - Friday, 11:00 am - 7:30 pm.
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/Mohamed M Medani/Examiner, Art Unit 3611
/JACOB D KNUTSON/Primary Examiner, Art Unit 3611
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