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 .
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.
Claims 1-10 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claim 1 limitation “designed in a modular manner” is unclear as to whether the claimed invention is modular or merely intended/designed as such. It is further unclear what element or elements are to be the module or modules.
The claim 1 limitation “a second input gear (112) are arranged on the input shaft (110)” which is contrary to the disclosure and thus unclear. See fig.1a which shows gear (112) to be on a short unlabeled shaft section (section connecting 112 to 150) that is distinct from input shaft (110). If this small unlabeled shaft section is to be considered a first part of a two-piece shaft (i.e., if 110 is two-pieces) then the drawings, written description and claims must be clearly and consistently amended to that end. If the small unlabeled shaft section is not part of 110 then the claim should be clarified to that end, e.g., by specifying that the first countershaft gear is connected to element 150 (rather than being arranged on the countershaft as currently claimed).
See MPEP 2173.03 which states that a claim may be “indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty.”
The claim 1 limitations “a first countershaft gear… arranged on the countershaft” and “wherein the first countershaft gear can be coupled to the countershaft via the first power-shifting element”, are unclear as to how the first countershaft gear (121) can be both “on the countershaft” and “can be coupled to the countershaft”. As shown in fig.1a the first countershaft gear (121) is connected to the first power-shifting element (140) by a small unlabeled shaft section that is distinct from the countershaft (120). If this small unlabeled shaft section is to be considered to be a first part of a two-piece shaft (120) then the drawings, written description and claims must be clearly and consistently amended to that end. If the small unlabeled shaft section is not part of 120 then the claim should be clarified to that end, e.g., by specifying that the first countershaft gear is connected to the first power-shifting element (rather than being arranged on the countershaft as currently claimed). See MPEP 2173.03 quoted elsewhere above.
Claim 1 recites “it can rotate” and “it cannot rotate” multiple times throughout the claim in a manner that is unclear as to which previously recited elements the pronoun “it” is to refer. Additionally, “it cannot rotate” is further unclear since all claimed gears and shafts appear to be rotatable. See MPEP 2173.03 quoted elsewhere above.
The claim 1 limitation “wherein the first countershaft gear (111) can be coupled to the countershaft (110) via the first power-shifting element (140)” recites reference characters that are inconsistent with previous recitations and contrary to the figures, such that it is unclear whether the labels or characters are to limit the claim. If the labels are to limit, the examiner suggests replacing/correcting with “wherein the first countershaft gear (121) can be coupled to the countershaft (120) via the first power-shifting element (140).
Claim 1 recites “first output gear can be coupled to the output shaft via the first power-shifting element (140)” which is contrary to the disclose and thus unclear (see MPEP 2173.03 quoted above). The examiner suggests claiming what is disclosed in the figures, i.e., -- first output gear (131) can be coupled to the output shaft (130) via the first shifting element (160) --.
Claim 1 recites “a force flow from the input shaft (110) to the third countershaft gear (123) can be produced indirectly via the second power-shifting element (150)”, which is contrary to the disclosure (e.g., fig.1b) which shows the force flow in bold that extends directly through the claimed elements, such that it is unclear how the limitation “indirectly” is to limit the claim.
The claims are generally narrative and indefinite, failing to clearly map to applicant’s disclosure and conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors throughout. In response to this Office action, applicant must carefully review and amend as necessary to ensure that all claim limitations clearly map to applicant’s disclosure fully conform with current U.S. practice (i.e., not only the claim 1 examples given above).
Claim Rejections - 35 USC § 102
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Akashi US 20160238109.
As noted in the 35 USC 112 clarity rejections elsewhere above a great deal of uncertainty exists as to claim meaning and scope. In accordance with MPEP § 2173.06 the examiner applies the prior art under 35 U.S.C. 102 in the interest of compact prosecution. However, an exhaustive mapping of the prior art to every limitation of the claims cannot be accomplished without substantial speculation and assumptions as to claim meaning and scope.1
Furthermore, the prior art is not overly complex and lies in the same general field as applicant's claimed invention such that the pertinence of the art to applicant's invention should be readily apparent without such exhaustive mapping.2
Akachi discloses claims 1-8 (as best as they can be understood) to include a power-shift gearbox (e.g., fig.1) comprising: an input shaft (11), a countershaft (13, 15), an output shaft (14), first/second power-shifting elements (10, 12), first/second/third shifting elements (40D, 41C, 41D), first/second/third/fourth countershaft gears (21B, 20B, 30B, 31B), and first/second output gears (30A, 31A). The prior art structure is presumed to be inherently capable of performing applicant’s claimed functions/properties, thereby establishing a prima facie case of anticipation and shifting burden to applicant to obtain/test the prior art to prove otherwise in accordance with MPEP 2112.01 and 2114.
Claim Rejections - 35 USC § 103
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 of this title, 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.
Claims 9 and 10 is rejected under 35 U.S.C. 103 as being unpatentable over Akashi US 20160238109.
Regarding claims 9 and 10, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Akachi power-shift gearbox to be used in an agricultural or municipal utility motor vehicle for the purpose of increasing the utility of the gearbox, the examiner taking Official notice that such use/utility was extremely well known to be desirable in the art.
Claims 1-10 is rejected under 35 U.S.C. 103 as being unpatentable over WO 9208067 and US 2991661.
As noted in the 35 USC 112 clarity rejections elsewhere above a great deal of uncertainty exists as to claim meaning and scope. In accordance with MPEP § 2173.06 the examiner applies the prior art under 35 U.S.C. 103 in the interest of compact prosecution. However, an exhaustive mapping of the art to every limitation of the claims cannot be accomplished without substantial speculation and assumptions as to claim meaning and scope. See footnote 1 on a previous page.
Furthermore, the prior art is not overly complex and lies in the same general field as applicant's claimed invention such that the pertinence of the art to applicant's invention should be readily apparent without such exhaustive mapping. See footnote 2 on a previous page.
The examiner notes the copy of the English translation of the PCT/ISA/237 form for PCT/EP2024/050585 that was filed by applicant in this application on 7/11/2025, and the examiner hereby adopts the explanations and obviousness rationale therein for prior art references WO9208067 and US22991661. See MPEP 1893.03(e)(II) which states that “The examiner may adopt any portion or all of the report on patentability of the IPEA or ISA upon consideration in the national stage so long as it is consistent with U.S. practice.”
Conclusion
The prior art made of record on the attached PTO-892 and not relied upon above is considered pertinent to applicant's disclosure due general structural similarity thereto.
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.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
1 See MPEP 2173.06 which states that a prior art rejection should not include considerable speculation about the meaning of terms employed in a claim or assumptions as to the scope of the claim citing In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970).
2 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" (emphasis added). 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…”
