DETAILED ACTION
This is on the merits of Application No. 19/192178, filed on 04/28/2025. Claims 1, 5-6, 8, and 10-13 are pending. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Terminal Disclaimer
The terminal disclaimer filed on 02/11/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of 11428279 and 12071988 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 1 and 6, 8, and 10-13 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 4-7 of U.S. Patent No. 12292090. Although the claims at issue are not identical, they are not patentably distinct from each other because all the limitations of the current application are established by the patent. The “cassette body” of the patent is structurally identical to the “ratchet ring” of the application. The “inductor” of the patent is identical to the “mechanical device” of the application.
Claim Objections
Claims 6 and 8 objected to because of the following informalities: Claim 6 and 8 state “a controller” and should state --the controller-- or --said controller--. Appropriate correction is required.
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, 5-6, 8, and 10-13 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 states “provide said at least one automatic signal to said mechanical device”. The term “said at least one automatic signal” lacks antecedent basis, making it unclear what signal is being sent. Although only the deactivation signal is established, the claim does not specify the signal being the deactivation signal.
Claim 8 states “a plurality of automatic deactivation signals”. This is a double inclusion as “at least one automatic deactivation signal” is already established in claim 1, on which claim 8 depends. It is unclear if this is part of the “at least one automatic deactivation signal” of claim 1 or new deactivation signals. If part of the same signals, it is suggested applicant state --wherein the at least one automatic deactivation signal is a plurality of automatic deactivation signals--.
The remaining claims are rejected for being dependent on a rejected claim.
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, 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 1, 5-6, 8, and 11 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. 2018/0010651 to Kimes (1) in view of U.S. Patent App. Pub. No. 2015/0204390 to Kimes(2).
Kimes(1) discloses:
(Claim 1) An electronic automatically decoupling hub assembly (Figs. 1-3 and par. [0067]-[0073], element 10) comprising: an axle (Fig. 1, Output shaft); a hub shell (12) rotationally positioned about said axle; a bearing (21) rotationally positioned about said axle; a ratchet ring (13) rotationally positioned about said bearing, said ratchet ring having at least one tooth (17) therein; at least one pawl (23) to selectively engage or disengage with said at least one tooth of said ratchet ring, a selective disengagement of said at least one pawl from said at least one tooth of said ratchet ring will cause said electronic automatically decoupling hub assembly to enter a freewheel state, and a selective engagement of said at least one pawl with said at least one tooth of said ratchet ring will cause said electronic automatically decoupling hub assembly to enter a force transfer state (see par. [0039], engaged state where one-way torque is transferred and disengaged state where no force is transferred (freewheel)); a mechanical device (170) coupled with said at least one pawl, said mechanical device to engage or disengage said at least one pawl with said at least one tooth of said cassette body assembly; a controller (par. [0068], controller controls activation and deactivation of stepper motor 144) to provide at least one automatic deactivation signal; said mechanical device to receive said at least one automatic deactivation signal and disengage said at least one pawl from said at least one tooth of said ratchet ring (par. [0068], controller controls activation and deactivation of stepper motor 144).
(Claim 5) further comprising: said hub shell rotationally positioned about said axle on a non-drive side of a wheel; and said bearing rotationally positioned about said axle on a drive side of said wheel (see Fig. 1).
(Claim 6) further comprising: a controller (par. [0068], controller controls activation and deactivation of stepper motor 144) to provide at least one automatic activation signal; and said mechanical device to receive said at least one automatic activation signal and engage said at least one pawl with said at least one tooth of said ratchet ring.
(Claim 8) further comprising: a controller to provide a plurality of automatic activation signals; said controller to provide a plurality of automatic deactivation signals; and said mechanical device to receive said plurality of automatic activation signals and said plurality of automatic deactivation signals and engage or disengage said at least one pawl with said at least one tooth of said ratchet ring in accordance therewith (par. [0068], controller controls activation and deactivation of stepper motor 144).
(Claim 11) further comprising: said ratchet ring having a plurality of teeth therein; and said mechanical device comprising a plurality of pawls, said plurality of pawls to selectively engage or disengage with at least two of said plurality of teeth of said ratchet ring (see Fig. 3).
Kimes(1) does not disclose:
(Claim 1) at least one sensor to provide an input to said controller, said input causing said controller to automatically provide said at least one automatic signal to said mechanical device.
Kimes(2) teaches:
(Claim 1) at least one sensor (56) to provide an input to said controller, said input causing said controller to automatically provide said at least one automatic signal to said mechanical device (Par. [0068], sensor is used to take into account the speed to better control when to engage and disengage).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified, with a reasonable expectation of success, the structure of Kimes(1) to use a sensor to provide an input to the controller to establish a signal, as taught by Kimes(2), in order to provide appropriate timing of activating and deactivating the pawl from the ratchet. In order to know when best to activate and deactivate the hub, some form of information must reach the controller. Kimes(2) provides a sensor that would provide information to the controller to know when to activate and deactivate the hub for overall control of the assembly.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Kimes(1) and Kimes (2) in further view of U.S. Patent App. Pub. No. 2010/0252389 to French.
Kimes(1) and Kimes(2) teach:
The limitations of claim 1.
Kimes(1) and Kimes(2) do not explicitly teach:
(Claim 12) further comprising: a seal to contain said at least one pawl within said electronic automatically decoupling hub assembly; a cassette body assembly coupled with said rachet ring; and an end cap coupled with said cassette body assembly to prevent a contaminant entry into said electronic automatically decoupling hub assembly.
French teaches:
(Claim 12) further comprising: a seal (754) to contain said at least one pawl (44) within said electronic automatically decoupling hub assembly; a cassette body (714) assembly coupled with said rachet ring (coupled through pawls); and an end cap coupled with said cassette body assembly to prevent a contaminant entry into said electronic automatically decoupling hub assembly (750).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified, with a reasonable expectation of success, the combination of Kimes(1) and Kimes(2) to have a seal, a cassette body coupled with the ratchet ring and an end cap, as taught by French, in order to prevent dirt and moisture from entering the system.
Claims 1, 5-6, 8, and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. 2010/0044180 to Chen in view of U.S. Patent App. Pub. No. 2014/0102844 to Greene et al and Kimes(2).
Chen discloses:
(Claim 1) An electronic automatically decoupling hub assembly (Figs. 3-4) comprising: an axle (10); a hub shell (21) rotationally positioned about said axle; a bearing (12) rotationally positioned about said axle; a ratchet ring (31) rotationally positioned about said bearing, said ratchet ring having at least one tooth (311) therein; at least one pawl (32) to selectively engage or disengage with said at least one tooth of said ratchet ring; a controller to provide at least one automatic deactivation signal; and said mechanical device to receive said at least one automatic deactivation signal and disengage said at least one pawl from said at least one tooth of said ratchet ring.
(Claim 5) further comprising: said hub shell rotationally positioned about said axle on a non-drive side of a wheel; and said bearing rotationally positioned about said axle on a drive side of said wheel (Fig. 3).
(Claim 11) further comprising: said ratchet ring having a plurality of teeth therein; and said mechanical device comprising a plurality of pawls, said plurality of pawls to selectively engage or disengage with at least two of said plurality of teeth of said ratchet ring (Fig. 4).
(Claim 12) further comprising: a seal (27) to contain said at least one pawl within said electronic automatically decoupling hub assembly; a cassette body assembly (41) coupled with said ratchet ring; and an end cap (Fig. 3 unlabeled end cap on the right) coupled with said cassette body assembly to prevent a contaminant entry into said electronic automatically decoupling hub assembly.
Chen does not disclose:
(Claim 1) a selective disengagement of said at least one pawl from said at least one tooth of said ratchet ring will cause said electronic automatically decoupling hub assembly to enter a freewheel state, and a selective engagement of said at least one pawl with said at least one tooth of said ratchet ring will cause said electronic automatically decoupling hub assembly to enter a force transfer state; and a mechanical device coupled with said at least one pawl, said mechanical device to engage or disengage said at least one pawl with said at least one tooth of said cassette body assembly.
(Claim 6) further comprising: a controller to provide at least one automatic activation signal; and said mechanical device to receive said at least one automatic activation signal and engage said at least one pawl with said at least one tooth of said ratchet ring.
(Claim 8) further comprising: a controller to provide a plurality of automatic activation signals; said controller to provide a plurality of automatic deactivation signals; and said mechanical device to receive said plurality of automatic activation signals and said plurality of automatic deactivation signals and engage or disengage said at least one pawl with said at least one tooth of said ratchet ring in accordance therewith.
Greene teaches:
(Claim 1) at least one pawl (20) to selectively engage or disengage with said at least one tooth (17) of said ratchet ring, a selective disengagement of said at least one pawl from said at least one tooth of said ratchet ring will cause said electronic automatically decoupling hub assembly to enter a freewheel state, and a selective engagement of said at least one pawl with said at least one tooth of said ratchet ring will cause said electronic automatically decoupling hub assembly to enter a force transfer state (Par. [0026], can engage or disengage and provides these limitations); and a mechanical device (14) coupled with said at least one pawl, said mechanical device to engage or disengage said at least one pawl with said at least one tooth of said cassette body assembly; a controller to provide at least one automatic deactivation signal; and said mechanical device to receive said at least one automatic deactivation signal and disengage said at least one pawl from said at least one tooth of said ratchet ring (Par. [0003], [0016], can use ECU to disengage).
(Claim 6) further comprising: a controller to provide at least one automatic activation signal; and said mechanical device to receive said at least one automatic activation signal and engage said at least one pawl with said at least one tooth of said ratchet ring (Par. [0003], [0016], can use ECU to engage).
(Claim 8) further comprising: a controller to provide a plurality of automatic activation signals; said controller to provide a plurality of automatic deactivation signals; and said mechanical device to receive said plurality of automatic activation signals and said plurality of automatic deactivation signals and engage or disengage said at least one pawl with said at least one tooth of said ratchet ring in accordance therewith (Par. [0003], [0016], can use ECU to can use controller to engage/disengage).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified, with a reasonable expectation of success, the structure of Chen to replace the one-way clutch with a selectable one-way clutch, as taught by Greene, in order to provide a freewheel action in the bicycle in order to lower parasitic losses of power.
Chen and Greene do not explicitly teach:
(Claim 1) further comprising: at least one sensor to provide an input to said controller, said input causing said controller to automatically provide said at least one automatic signal to said mechanical device.
Kimes(2) teaches:
(Claim 1) further comprising: at least one sensor (56) to provide an input to said controller, said input causing said controller to automatically provide said at least one automatic signal to said mechanical device (Par. [0068], sensor is used to take into account the speed to better control when to engage and disengage).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified, with a reasonable expectation of success, the structure of Chen and Green to use a sensor to provide an input to the controller to establish a signal, as taught by Kimes(2), in order to provide appropriate timing of activating and deactivating the pawl from the ratchet. In order to know when best to activate and deactivate the hub, some form of information must reach the controller. Kimes(2) provides a sensor that would provide information to the controller to know when to activate and deactivate the hub for overall control of the assembly.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Chen, Green, and Kimes(2) in further view of U.S. Patent App. Pub. No. 2012/0138411 to Samie et al.
Chen, Green, and Kimes(2) teach:
The limitations of claim 1.
Chen, Green, and Kimes(2) do not teach:
(Claim 13) wherein said mechanical device is activated by a manual input provided by a user of a vehicle including said electronic automatically decoupling hub assembly.
Samie teaches:
(Claim 13) controlling a SOWC in a manual input mode (Par. [0038]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified, with a reasonable expectation of success, the structure of Chen, Green, and Kimes(2) to use a manual input to provide an input to the controller to establish a signal, as taught by Samie, in order to provide manual control of activating and deactivating the pawl from the ratchet, providing more handling over when the user would want the pawl to be active.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 5-6, 8, and 10-13 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TIMOTHY HANNON whose telephone number is (571)270-1943. The examiner can normally be reached Monday - Friday 10-6.
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/TIMOTHY HANNON/Primary Examiner, Art Unit 3655
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