DETAILED ACTION
The following is a first action on the merits of application serial no. 19/182716 filed 4/18/2025.
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 .
Information Disclosure Statement
The information disclosure statement filed 7/22/25 has been considered.
Specification
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 the legal phraseology “comprises” should be deleted from lines 5 and 9 accordingly. 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 Objections
Claims 1 and 4 are objected to because of the following informalities:
-In claim 1, line 23, “downshifting” should be changed to “upshifting”.
- In claim 4, the term “an” should be changed to “and”.
Appropriate correction is required.
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.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
-“an actuation unit (generic placeholder) configured for, upon receiving an upshift input, upshifting the bicycle transmission….. (function) in claim 1 (similar limitations in claims 2, 20, 41, 42 and 58).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-5, 8, 10-13, 14, 18, 20, 21, 25, 41-45, 58 and 59 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 recites the preamble “A method for upshifting a bicycle transmission system being” followed by limitations labeled (a)-(d). It is unclear as to what the term “being” is referring to in the preamble and the examiner suggest applicant change “being” to “comprising” to clarify that those limitations are included in scope of claim to be given patentable weight.
-Claim 2 recites the preamble “A method for downshifting a bicycle transmission system being” followed by limitations labeled (a)-(d). It is unclear as to what the term “being” is referring to in the preamble and the examiner suggest applicant change “being” to “comprising” to clarify that those limitations are included in scope of claim to be given patentable weight.
-Claim 1 recites the limitation “wherein the bicycle transmission system comprises” after the limitations labeled (a)-(d). Based on the term “being” recited in the preamble pertaining to the labeled limitations (a)-(d), it is unclear as to what applicant considers the scope coverage of claim to be given patentable weight. Examiner suggest changing “comprises” to “includes” to clarify the scope of claims to be given patentable weight.
-Claim 2 recites the limitation “wherein the bicycle transmission system comprises” after the limitations labeled (a)-(d). Based on the term “being” recited in the preamble pertaining to the labeled limitations (a)-(d), it is unclear as to what applicant considers the scope coverage of claim to be given patentable weight. Examiner suggest changing “comprises” to “includes” to clarify the scope of claims to be given patentable weight.
-Claim 1 recites the limitation “the method comprising, for one or more of the one or more coactive shifts of the upshift sequence…….”. The recitation “for one or more of the one or more….” is unclear as written, please clarify what this limitation is referring to.
-Claims 5, 8, 13 and 15 recite the term “optionally” followed by additional limitations. These claims seem to encompass broad limitations together with narrow limitations and are considered indefinite due to the metes and bounds of the patent protection desired not clearly being set forth. For example, claim 5 recites: “wherein the first transmission comprises one or more first planetary gear sets, each having at least three rotatable members, optionally wherein one of the one or more first clutches and/or brakes is configured for coupling a first rotatable member of one of the one or more first planetary gear sets with a second rotatable member of the one of the one or more first planetary gear sets (narrow limitations), further optionally wherein one of the one or more first clutches and/or brakes is configured for coupling a ring gear of one of the one or more first planetary gear sets with a planet carrier of the one of the one or more first planetary gear sets (further narrow limitations).” The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by narrower language is merely exemplary of the remainder of the claim, and therefore not required, or a required feature of the claims. Examiner suggest applicant amend claims 5, 8, 13 and 15 with the narrow or further narrow limitations that applicant clearly desires patent protection for.
-Claim 41 recites “A bicycle transmission system” and seems to recite the method steps recited in claim 1, i.e., upon receiving an upshift input, upshifting the bicycle transmission………downshifting or at least triggering downshifting, etc. Per MPEP 2173.05(p): a claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process. However, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). The examiner suggest applicant amend the limitations reciting any type of method steps into a “function” and/or “apparatus” type limitation accordingly. Similar issue in claim 58 that depends from claim 41.
-Claim 42 recites “A bicycle transmission system” and seems to recite the method steps recited in claim 2, i.e., upon receiving an downshift input, downshifting the bicycle transmission………upshifting or at least triggering upshifting, etc. Per MPEP 2173.05(p): a claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process. However, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). The examiner suggest applicant amend the limitations reciting any type of method steps into a “function” and/or “apparatus” type limitation accordingly.
-Claim 45 recites the limitation “optionally” followed by additional limitations. Please clarify if the term is being used to recite additional/alternative embodiments within claim.
Note: Claims 1 and 2 recite method limitations combined with apparatus limitations. Per MPEP 2173.05(p): a claim to a device, apparatus, manufacture, or composition of matter may contain a reference to the process in which it is intended to be used without being objectionable under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, so long as it is clear that the claim is directed to the product and not the process. However, a single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97 USPQ2d 1737, 1748-49 (Fed. Cir. 2011). However, it is clear that claims 1 and 2 as compared to claims 41 and 42 are “method” claims as recited in preamble and within body of claim and therefore are not being interpreted as indefinite.
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.
Claim(s) 1, 2, 4, 10, 11, 18, 20, 21, 25, 41, 42, 44 and 58 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmitz et al 20140090500 (IDS cited art).
Note: the use of the term “or” indicates that the limitations preceding or following the term doesn’t need to be met entirely and the recitations are in the form of “alternative” embodiments.
As to claim 1, Schmitz discloses a method for upshifting a bicycle transmission system being:(a) an internal bicycle hub transmission system or (b)an internal bicycle crank transmission system or (c) a combination of an internal bicycle hub transmission system and an internal crank transmission system or (d) an internal bicycle hub and/or crank transmission system in combination with a multi-ratio chain or belt transmission system, wherein the bicycle transmission system comprises (Figure 1): a first transmission (26) having at least two different transmission ratios ([0122]) , a second transmission (28) having at least two different transmission ratios ([0122]), wherein the first transmission and the second transmission are connected to each other in series to form a bicycle transmission that is selectively operable according to a plurality of different bicycle transmission ratios (Figure 2; [0076]-[0079]), and an actuation unit configured for, upon receiving an upshift input, upshifting the bicycle transmission according to an upshift sequence (Figure 5), wherein the upshift sequence comprises one or more coactive shifts of upshifting the bicycle transmission by coactively downshifting a first one of the first transmission and the second transmission and upshifting a second one of the first transmission and the second transmission ([0122]), the method comprising, for one or more of the one or more coactive shifts of the upshift sequence, downshifting, or at least triggering downshifting of, the first one of the first transmission and the second transmission and subsequently upshifting, or at least triggering downshifting of, the second one of the first transmission and the second transmission ([0122]).
As to claim 2, Schmitz discloses a method for downshifting a bicycle transmission system being:(a) an internal bicycle hub transmission system or (b)an internal bicycle crank transmission system or (c) a combination of an internal bicycle hub transmission system and an internal crank transmission system or (d) an internal bicycle hub and/or crank transmission system in combination with a multi-ratio chain or belt transmission system, wherein the bicycle transmission system comprises (Figure 1): a first transmission (26) having at least two different transmission ratios ([0122]) , a second transmission (28) having at least two different transmission ratios ([0122]), wherein the first transmission and the second transmission are connected to each other in series to form a bicycle transmission that is selectively operable according to a plurality of different bicycle transmission ratios (Figure 2; [0076]-[0079]), and an actuation unit configured for, upon receiving an downshift input, downshifting the bicycle transmission according to an downshift sequence, wherein the downshift sequence comprises one or more coactive shifts of downshifting the bicycle transmission by coactively upshifting a first one of the first transmission and the second transmission and downshifting a second one of the first transmission and the second transmission ([0130]), the method comprising, for one or more of the one or more coactive shifts of the downshift sequence, upshifting, or at least triggering upshifting of, the first one of the first transmission and the second transmission and subsequently downshifting, or at least triggering downshifting of, the second one of the first transmission and the second transmission ([0130]).
As to claim 4, wherein the first transmission has one or more first clutches an/or brakes for shifting the first transmission between at least two different transmission ratios, and one or more first actuators for actuating the one or more first clutches and/or brakes ([0077] selecting means; [0084]).
As to claim 10, wherein the first transmission comprises one or more gear sets having parallel input and out axles (Figure 2; 36 can be considered output shaft by receiving torque input from input shaft 20).
As to claim 11, wherein the second transmission has one or more second clutches and/or brakes for shifting the second transmission between at least two different transmission ratios, and one or more second actuators for actuating the one or more second clutches and/or brakes ([0078]-[0079] selecting means; [0084]).
As to claim 18, wherein one of the first transmission and the second transmission comprises one or more rotatable clutches and/or brakes each configured for coupling a rotatable member with a further rotatable member, and one or more rotatable actuators for actuating the one or more rotatable clutches and/or brakes, and/or wherein one of the first transmission and the second transmission comprises one or more stationary clutches and/or brakes each configured for coupling a rotatable member with a stationary member, and one or more stationary actuators for actuating the one or more stationary clutches and/or brakes ([0077], [0084]).
As to claim 20, wherein the actuation unit is further configured for, upon receiving an downshift input, downshifting the bicycle transmission according to an downshift sequence, wherein the downshift sequence comprises one or more coactive shifts of downshifting the bicycle transmission by coactively upshifting a first one of the first transmission and the second transmission and downshifting a second one of the first transmission and the second transmission ([0130]), the method comprising, for one or more of the one or more coactive shifts of the downshift sequence, upshifting, or at least triggering upshifting of, the first one of the first transmission and the second transmission and subsequently downshifting, or at least triggering downshifting of, the second one of the first transmission and the second transmission ([0130]).
As to claim 21, wherein for one or more of the one or more coactive shifts and/or downshifts, the method comprises activating the one or more actuators of the first one of the first transmission and the second transmission and activating the one or more actuators of the second one of the first transmission and the second transmission, the activating of the one or more first actuators of the first one of the first transmission and the second transmission and the activating of the one or more second actuators of the second one of the first transmission and the second transmission being separated in time by a time interval ([0020], [0048], one being shifted while the other is loaded).
As to claim 25, wherein the time interval is determined based on an engagement index of the one or more first clutches and/or brakes and/or an engagement index of the one or more second clutches and/or brakes, and/or wherein the time interval is predetermined and equal for all coactive shifts of the one or of the one or more coactive shifts, and/or wherein the time interval is adaptable and determined for each coactive shift in use of the bicycle (Figures 10a-10d).
As to claim 41, Schmitz discloses a bicycle transmission system comprising: a first transmission (26) having at least two different transmission ratios ([0122]) , a second transmission (28) having at least two different transmission ratios ([0122]), wherein the first transmission and the second transmission are connected to each other in series to form a bicycle transmission that is selectively operable according to a plurality of different bicycle transmission ratios (Figure 2; [0076]-[0079]), and an actuation unit configured for, upon receiving an upshift input, upshifting the bicycle transmission according to an upshift sequence (Figure 5), wherein the upshift sequence comprises one or more coactive shifts of upshifting the bicycle transmission by coactively downshifting a first one of the first transmission and the second transmission and upshifting a second one of the first transmission and the second transmission ([0122]), wherein the actuation unit is configured for, for one or more of the one or more coactive shifts of the upshift sequence, downshifting, or at least triggering downshifting of, the first one of the first transmission and the second transmission and subsequently upshifting, or at least triggering downshifting of, the second one of the first transmission and the second transmission ([0122]).
As to claim 42, Schmitz discloses a bicycle transmission system comprising: a first transmission (26) having at least two different transmission ratios ([0122]) , a second transmission (28) having at least two different transmission ratios ([0122]), wherein the first transmission and the second transmission are connected to each other in series to form a bicycle transmission that is selectively operable according to a plurality of different bicycle transmission ratios (Figure 2; [0076]-[0079]), and an actuation unit configured for, upon receiving an downshift input, downshifting the bicycle transmission according to an downshift sequence, wherein the downshift sequence comprises one or more coactive shifts of downshifting the bicycle transmission by coactively upshifting a first one of the first transmission and the second transmission and downshifting a second one of the first transmission and the second transmission ([0130]), wherein the actuation unit is configured for, for one or more of the one or more coactive shifts of the downshift sequence, upshifting, or at least triggering upshifting of, the first one of the first transmission and the second transmission and subsequently downshifting, or at least triggering downshifting of, the second one of the first transmission and the second transmission ([0130]).
As to claim 44, wherein the first transmission has one or more first clutches an/or brakes for shifting the first transmission between at least two different transmission ratios, and one or more first actuators for actuating the one or more first clutches and/or brakes ([0077] selecting means; [0084]).
As to claim 58, wherein the an actuation unit is further configured for, upon receiving an downshift input, downshifting the bicycle transmission according to an downshift sequence, wherein the downshift sequence comprises one or more coactive shifts of downshifting the bicycle transmission by coactively upshifting a first one of the first transmission and the second transmission and downshifting a second one of the first transmission and the second transmission ([0130]), wherein the actuation unit is configured for, for one or more of the one or more coactive shifts of the downshift sequence, upshifting, or at least triggering upshifting of, the first one of the first transmission and the second transmission and subsequently downshifting, or at least triggering downshifting of, the second one of the first transmission and the second transmission ([0130]).
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(s) 3, 5, 8, 12, 13, 15, 43 and 45 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schmitz in view of NL 2028336 (IDS cited art with machine translation). As to claims 3 and 43, Schmitz discloses the first and second transmissions having ratio steps, but doesn’t disclose if one of the transmission has smaller ratio steps than the other as recited.
NL discloses a bicycle transmission system having a first and second transmission (100, 200) and shows that it is well known in the art to provide one of the transmission with a smaller ratio step size than the other (Tables 1 and 2).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the first or second transmission in Schmitz with a small size ratio step between ratios in view of NL to allow for smoother shift transition between gears which enhances acceleration and improves overall bicycle performance.
As to claims 5, 8, 12, 13, 15 and 45, Schmitz discloses first and second transmissions having up to three planetary sets (Figures 3 and 9), but doesn’t disclose these sets as recited in the above claims.
NL discloses a bicycle transmission system having a first and second transmission (100, 200) and shows that it is well known in the art to provide both transmission with one or more planetary gear sets, each having three members as recited in claim 12 of present invention, (page 23, lines 6-7 describes that any one of the transmissions can have planetary sets). As to claim 5, NL discloses at least the first transmission (100 or 200) having one or more first planetary gear sets, each having at least three rotatable members, optionally wherein one of the one or more first clutches and/or brakes is configured for coupling a first rotatable member of one of the one or more first planetary gear sets with second rotatable member of the one of the one or more first planetary gear sets (as shown in Figures 6A, 6B, 7), further optionally wherein one of the one or more first clutches and/or brakes is configured for coupling a ring gear of one of the one or more first planetary gear sets with a planet carrier of the one of the one or more first planetary gear set (via C2 in Figure 6B). As to claim 8, NL discloses at least the first transmission (100 or 200) wherein one of the one or more first clutches and/or brakes is configured for coupling a third rotatable member of one of the one or more first planetary gear sets with a stationary member, optionally wherein one of the one or more first clutches and/or brakes is configured for coupling a sun gear of one of the one or more first planetary gear sets with a stationary axle, or for coupling a ring gear of one of the one or more first planetary gear sets with a stationary housing (via C2 in Figure 6A or via C3 in Figure 7). As to claim 13, NL discloses at least the second transmission (100 or 200) wherein one of the one or more second clutches and/or brakes is configured for coupling a first rotatable member of one of the one or more second planetary gear set with a second rotatable member of the one of the one or more second planetary gear sets, optionally wherein one of the one or more second clutches and/or brakes is configured for coupling a ring gear of one of the one or more second planetary gear sets with a planet carrier of the one of the one or more second planetary gear sets (via C2 in Figure 6B). As to claim 15, NL discloses at least the second transmission (100 or 200) wherein one of the one or more second clutches and/or brakes is configured for coupling a third rotatable member of one of the one or more second planetary gear sets with a stationary member optionally wherein one of the one or more second clutches and/or brakes is configured for coupling a sun gear of one of the one or more second planetary gear sets with a stationary axle, or for coupling a ring gear of one of the one or more second planetary gear sets with a stationary housing (via C2 in Figure 6A or via C3 in Figure 7). As to claim 45, NL discloses at least the second transmission (100 or 200) wherein the first transmission comprises one or more first planetary gear sets, each having at least three rotatable members optionally wherein one of the one or more first clutches and/or brakes is configured for coupling a first rotatable member of one of the one or more first planetary gear sets with a second rotatable member of the one of the one or more first planetary gear sets (via C2 in Figure 6B).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the first and second transmission in Schmitz with planetary gear sets in view of NL to provide additional output ratios between gears which enhances acceleration and improves overall bicycle performance.
Allowable Subject Matter
Claim 59 is objected to (via prior art purposes only) 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. Due to the 112(b) rejection pertaining to claim 41 from which this claim directly depends from, reasons for allowance will not be indicated until after applicant’s response.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
-Soliman et al 20050096820 (abstract) discloses a planetary transmission system for a vehicle having a first and second transmission and shows that it is well known in the art to coactively upshift and downshift both transmissions wherein at least one of the transmissions outputs an overdrive ratio.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TISHA D LEWIS whose telephone number is (571)272-7093. The examiner can normally be reached Mon-Fri: 8:30am to 5:00pm.
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Tdl
/TISHA D LEWIS/Primary Examiner, Art Unit 3619 February 7, 2026