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 .
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-7 and 9-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. US1225039 in view of the common skill/knowledge/sense in the art (i.e., one skilled and knowledgeable enough to design, manufacture and use gear switching devices).
Although the conflicting claims are not identical, they are not patentably distinct from each other because the prior patent claims are so similar as to have suggested as obvious the current application claims to one of ordinary skill/knowledge/sense in the art before the effective filing date of the claimed invention. The copending claims are not overly complex and lie in the same general field as applicant's claimed invention (having common inventorship and ownership therewith). Accordingly, the pertinence of the copending claims to the current claims as well as what ordinary skill/knowledge in the art would suggest should be readily apparent and flows naturally from the claims.1
Current child claims 1 and 9 are each substantially similar to parent claim 8 (to include claim 1 from which claim 8 depends) and flows naturally/obviously therefrom.
Current child claims 2-7 are substantially similar to parent claims 2-7, respectively, and flow naturally/obviously therefrom.
Current child claims 10-12 are substantially similar to parent claims 3-5, respectively, and flow naturally/obviously therefrom.
Allowable Subject Matter
Claims 1-7 and 10-12 would be allowable if the Double Patenting rejections set forth in this Office action are overcome (e.g., by the filing of a Terminal Disclaimer).
Claims 8 and 13 are 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.
Prior Art
Suzuki JP2012072829 suggests certain parts of independent claims 1 and 9, to include a device (fig.1) for switching the first partial gear mechanism and the second partial gear mechanism, the device including an actuator (actuator of fig.1) connected for drive purposes to a rotatable component (40), a first switching device (switching device of fig.1) arranged on the rotatable component for switching the first partial gear mechanism between its two gear stages, and a second switching device (obvious to duplicate the first switching device for increasing gears/utility) arranged on the rotatable component for switching the second partial gear mechanism between its two gear stages, wherein the first switching device and the second switching device each comprise:- a sleeve (41) arranged rotationally fixedly (via 44), - a shift gate (42) formed on the sleeve,- a guide element (26) arranged fixedly relative to the device (in that it is confined within the device of fig.1) and engaging in the shift gate,- a shift fork (13) arranged axially movably on the sleeve and engaging in a sliding collar (collar engaged by 15, not shown but known/necessary/obvious in the art) of the respective partial gear mechanism, and- an elastic storage arrangement (30) which can be loaded by the sleeve via a first carrier element (24) arranged fixedly on the sleeve in order to transmit a load to the shift fork. However, the Suzuki sleeve (41) is NOT arranged to be axially movably on the rotatable component (40) as required by applicant’s claim 1, but is rather axially fixed thereto by pin (44). Further, any modification toward axial movability as claimed by applicant would destroy the mode of operation of Suzuki, which requires the sleeve (41) to be fixed both axially and rotationally to the rotatable component (40) so that gate (42) can transform the rotational movement of the sleeve (41) into axial movement of the guide element (26). The prior art does not provide any teaching, suggestion or motivation to modify toward the entirety of applicant's claim, nor was there any readily apparent cogent reasoning that is unequivocally independent of hindsight that would have led one of ordinary skill in the art at the time the invention was made to modify the prior art to obtain the entirety of applicant’s claimed invention.
Claims 2-8 depend from claim 1, and claims 10-13 depend from claim 9, such that they are similarly allowable over the prior art.
Clarity
The examiner notes that the claim language could be more suitably expressed. For instance, "axially movably" (claim 1 and claim 9) could be reworded as --axially movable-- to better conform with proper English. As another example, the preamble of claim 1 could be reworded to delete the functional intended use phraseology “for” (line 8 in each of claims 1 and 9), noting that the device is clearly in structural combination with the partial gear mechanisms since the shift fork of the device is positively limited in the body of claim 1 as “engaging in a sliding collar of the respective partial gear mechanism” (lines 21-22 of claim 1, and similar phraseology in lines 23-24 of claim 9). See MPEP 2111.02 regarding “Effect of Preamble”. Despite minor matters of form, the examiner finds the claims to be sufficiently clear and precise in accordance with MPEP 2173.02(II) which states that the claims are not read in a vacuum but rather “must not be rejected” but rather "the examiner should allow claims" that set forth the scope of protection/infringement with a sufficient degree of particularity and distinctness without true ambiguity when analyzed on the whole in light of the content of the application disclosure, prior art teachings and the interpretations that would be given by one possessing ordinary skill in the art. Applicant may wish to make minor amendments to the mode of expression of terms that do not alter the scope of the claims via 37 CFR 1.312 (see MPEP 714.16[I]). If applicant wishes to amend to alter the scope of the claims, then prosecution must be reopened via RCE (see MPEP 706.07[h]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
1 See 37 C.F.R. 1.104(c)(2) which states "In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) which states “There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement… Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence." Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon…”