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 CORRESPONDENCE
This is the first Office Action on the merits of Application 19/104,434 filed on 2/18/25. Claims 1-8 are pending.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2/18/25 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Specification
Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Abstract
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
The abstract of the disclosure is objected to because it exceeds 150 words. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
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 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for the second rotational part with either the fourth rotational part or the fifth rotational part are connectable and disconnectable with respect to each other, does not reasonably provide enablement for any specific two among the second rotational part, the fourth rotational part, and the fifth rotational part are connectable and disconnectable with respect to each other. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Figure 1 discloses the second rotational part (e.g. P2) being connectable and disconnectable via the second clutch (e.g. CL2) with the fourth rotational part (e.g. P4). Further figure 4 discloses the second rotational part (e.g. P2) being connectable and disconnectable via the second clutch (e.g. CL2) with the fifth rotational part (e.g. P4). However the specification does not disclose how the fourth and fifth rotational parts are connectable and disconnectable from each other. One of ordinary skill in the art would not be able to make and/or use the invention commensurate in scope with these claims.
Claims 2-8 are also rejected to for being dependent upon a rejected base claim.
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 1-8 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
The "alignment chart" recited in the claims render the claims indefinite because the invention, a multi-speed transmission, is not clearly and specifically claimed, but rather a means for representing the invention is recited. The "alignment chart" recited in the claims are not a physical/structural component of the "multi-speed transmission" as currently disclosed. The alignment chart is a representation of the transmission is merely a figure and does not contribute to the invention. Additionally, the claims are directed towards an apparatus, and the representation of the apparatus on an alignment chart does not add any structural significance to the invention because the diagrams are not a part of the apparatus. By incorporating the "alignment chart and rotational part positions", etc., which are graphical representations of the transmission, the focus of the claims is shifted from the apparatus to a figure or drawing that may only be useful in understanding the construction of the apparatus, but plays no part in the apparatus itself. Incorporation by reference to a specific figure or table is permitted only in circumstances where there is no practical way to define the invention in words. See MPEP 2173.05(s).
The invention is a multi-speed transmission, not a means of characterizing the elements of the transmission. Because the application is for an apparatus, it is those specific elements which make up the apparatus that should be claimed, not their representatives or the means by which they are commonly characterized. Since claim language is taken literally, it is not true that the planetary gear operational elements are physically arranged on a sheet of paper called an alignment chart.
Claims 2-8 are also rejected as being dependent on a rejected base claim.
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, 6 & 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent 5,997,429 to Raghavan et al.
Claim 1
Raghavan discloses in Fig. 1,
A unit comprising: an input element (e.g. 12); an output element (e.g. 14); and a gear device which is implemented by coupling respective rotational elements of a first planetary gear mechanism and a second planetary gear mechanism (e.g. sets of 42 & 54 respectively) at one place and in which, on an alignment chart, a second rotational part which is the coupled rotational elements is disposed between a first rotational part and a third rotational part, and a fifth rotational part is disposed between the second rotational part and a fourth rotational part, wherein the input element is connected to the first rotational part (e.g. operatively connected to 44), the output element is connected to the fifth rotational part (e.g. 52), the third rotational part (e.g. 40, operatively via 60, 58 & 30) is fixed, the fourth rotational part (e.g. 50) is selectively connectable to a fixed element (e.g. via 32) or the first rotational part, and any specific two among the second rotational part, the fourth rotational part, and the fifth rotational part are connectable and disconnectable with respect to each other (e.g. 42 & 52, second and fifth rotational parts respectively).
Claim 6
The unit according to claim 1, further comprising: a first engagement element (e.g. 28); a second engagement element (e.g. 26); and a third engagement element (e.g. 32), wherein one side of the first engagement element is connected to the first rotational part, the other side of the first engagement element is connected to the fourth rotational part, one side of the second engagement element is connected to the fifth rotational part, the other side of the second engagement element is connected to the second rotational part, one side of the third engagement element is connected to the fourth rotational part, and the other side of the third engagement element is fixed to the fixed element.
Claim 8
The unit according to claim 6, wherein the other side of the first engagement element and the one side of the third engagement element are implemented as an integrated component (see Fig 1, e.g. 28 & 32, are directly connected to each other).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUAN LE whose telephone number is (571)270-3122. The examiner can normally be reached on Monday - Friday 9:00am - 5:00pm PST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jacob Scott can be reached on 571-270-3415. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HUAN LE/Primary Examiner, Art Unit 3655
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