DETAILED ACTION
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.
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 5, 10, 11, and 12 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.
Claims 5, 10, 11, and 12 each recite the phrase “and/or” rendering the claims indefinite. It is unclear as to whether the claims scope includes, one, the other, or both relevant claim elements. The examiner suggests - -and- -. Appropriate correction is required.
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 1-7, and 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stuttgart DE 752,595.
Stuttgart discloses:
Claim 1- a housing (implicit), a first gearwheel and a second gearwheel (see unnumbered gears in fig 4), a first shift fork (5) and a second shift fork (4) , wherein the first shift fork is movable between at least two positions (I, R), comprising a first shift fork first position in which the first gearwheel is locked to a first element (11) by the first shift fork and a first shift fork second position in which the first gearwheel is freely rotatable with respect to the first element (the device is capable of this function), and wherein the second shift fork is movable between at least two positions, comprising a second shift fork first position in which the second gearwheel is locked to a second element (11) by the second shift fork and a second shift fork second position in which the second gearwheel is freely rotatable with respect to the second element (the device is capable of this function), a first shift rod (3) and a second shift rod (2), configured to move the first shift fork and the second shift fork, respectively, between its respective at least two positions (the device is capable of this function), wherein the first shift rod is movable along a first shift rod axis and the second shift rod is movable along a second shift rod axis, wherein the first and second shift rods are configured to abut (see figs 2 and 4) , such that movement to a forbidden gear position is prevented (the device is capable of this function), wherein the forbidden gear position comprises the first shift fork and the second shift fork simultaneously being in the first shift fork first position and the second shift fork first position (the device is capable of this function).
Claim 2- wherein end portions of the first and second shift rods are configured to abut, such that movement to the forbidden gear position is prevented (the device is capable of this function).
Claim 3- wherein the first shift rod and the second shift rod are aligned along a common shift rod axis (see axis of 1, 2, 3 in figs 1, 2, 4).
Claim 4- wherein the first shift rod and the second shift rod are configured to move towards and away from each other (the device is capable of this function).
Claim 5- wherein the first shift fork second position is a gear transmission position in which the first gearwheel is arranged to transfer power, and/or wherein the second shift fork second position is a gear transmission position in which the second gearwheel is arranged to transfer power (the device is capable of this function).
Claim 6- wherein the first gearwheel and the second gearwheel are arranged to rotate with respect to a common rotational axis (fig 4).
Claim 7- wherein the first element and the second element are part of the same component (instances of 11 are part of the same transmission).
Claim 15- A vehicle (implicit) comprising a gearshift arrangement according to claim 1 (see above).
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of issued US Application No. 19/256,536. Although the claims at issue are not identical, they are not patentably distinct from each other because of the following:
An obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but an examined application claim(s) is/are not patentably distinct from the reference claim(s) because the examined claim(s) is/are 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, 11F. 3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985). Although the conflicting claims are not identical, they are not patentably distinct from each other because claim 8 is generic to all that is recited in claim 14 of copending issued US Application No. 19/256,536. In other words, claim 14 of copending issued US Application No. 19/256,536 is fully encompassed by the subject matter of claim 8 and therefore anticipates claim 8. Since claim 8 is anticipated by claim 14 of copending issued US Application No. 19/256,536, it is not patentably distinct from claim 14 of copending issued US Application No. 19/256,536. Thus the invention of claim 14 of copending issued US Application No. 19/256,536 is in effect a “species” of the “generic” invention of claim 8. It has been held that the generic invention is anticipated by the species, see In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Since claim 8 is anticipated (fully encompassed) by claim 14 of copending issued US Application No. 19/256,536, regardless of any additional subject matter present in claim 14 of copending issued US Application No. 19/256,536.
Allowable Subject Matter
Claims 9-14 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.
The following is a statement of reasons for the indication of allowable subject matter: the prior art neither discloses nor renders obvious the claimed combinations including:
wherein end portions of the first and second shift rods are configured to abut when the first and the second chambers are fluidly pressurized and the third chamber is not fluidly pressurized.
wherein the first piston is provided radially in-between the first shift rod first sleeve and the first shift rod second sleeve, and wherein the second piston is provided radially in-between the second shift rod first sleeve and the second shift rod second sleeve.
wherein the first shift rod first sleeve is movable in the directions towards and away from the second shift rod and configured to abut a first stop surface of the housing when it is moved towards the second shift rod, and/or wherein the first shift rod second sleeve is movable in the directions towards and away from the second shift rod and configured to abut a second stop surface of the housing when it is moved away from the second shift rod.
wherein the second shift rod first sleeve is movable in the directions towards and away from the first shift rod and configured to abut a third stop surface of the housing when it is moved towards the first shift rod, and wherein the second shift rod second sleeve is movable in the directions towards and away from the first shift rod and configured to abut a fourth stop surface of the housing when it is moved away from the first shift rod.
wherein at least one of, preferably each one of, the first shift rod first sleeve, the first shift rod second sleeve, the second shift rod first sleeve and the second shift rod second sleeve comprises a first contact surface which is in contact with the inner peripheral surface and a second contact surface which is in contact with the first/second piston, wherein the first and second contact surfaces are separated from each other, as seen along the respective first/second shift rod axis.
wherein the first shift fork comprises a first end which form a contacting interface with the first shift rod, a second end, opposite to the first end, which optionally engage with a first clutch for the first gearwheel, and a pivot, located between the first end and the second end, wherein the first shift fork is rotatable about the pivot when it is moved by the first shift rod between its at least two positions, wherein the first shift fork, at the first end thereof, comprises a first curved surface and the first shift rod comprises a second surface, and wherein the first curved surface and the second surface form the contacting interface therebetween arranged to move the first shift fork between its at least two positions, wherein the first curved surface and the second surface are formed such that, when the first shift rod moves the first shift fork between its at least two positions, a normal of the respective first curved surface and the second surface at the contacting interface is continuously directed in a direction corresponding to the movement direction of the first shift rod.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2026/0022767 A1 and US 2026/0022767 A1 disclose similar devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TERENCE BOES whose telephone number is (571)272-4898. The examiner can normally be reached Monday-Friday 10-6:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at (571) 270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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TERENCE BOES
Primary Examiner
Art Unit 3618
/TERENCE BOES/Primary Examiner, Art Unit 3618
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