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 .
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the EPO on July 16, 2024. It is noted, however, that applicant has not filed a certified copy of the EP 24188889 application as required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on July 7, 2025 has been considered by the Examiner.
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 1-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 1 claims, “the first shift rod comprises a second surface, and wherein the first curved surface and the second surface form the contacting interface therebetween”. Claim 3 claims, “the second surface is a groove side surface of the groove” and claim 6 recites the limitation, “the groove side surface is a planar surface which is perpendicular to the first shift rod axis”. As best understood from the specification as filed, the groove side surface of the groove is item 512 and shown in the drawing as Fig. 2c and not in contact with any part of the tooth member of the shift fork. Further, the planar surface is parallel to the shift rod axis and not perpendicular. Please clarify.
Remaining claims are rejected for depending on claim 1.
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 1-15 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 limitation, “…the first shift fork … which optionally is configured to engage a first clutch…”. The metes and bounds of the invention are unclear if the first shift fork may or may not be configured to engage the first clutch. Please clarify.
Claim 1 recites the limitation, “the first shift rod comprises a second surface, and wherein the first curved surface and the second surface form the contacting interface therebetween”. Claim 3 claims, “the second surface is a groove side surface of the groove” and claim 6 recites the limitation, “the groove side surface is a planar surface which is perpendicular to the first shift rod axis”. As best understood from the specification as filed, the groove side surface of the groove is item 512 and shown in the drawing as Fig. 2c and not in contact with any part of the tooth member of the shift fork. How could this be if the curved surface of the shift fork is in contact with the second surface of the shift rod as described at claim 1? Further, the planar surface is parallel to the shift rod axis and not perpendicular. Please clarify.
Remaining claims are rejected for depending on claim 1.
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.
Claims 1-6 and 15, as best understood, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kraft et al. (DE 10 2018 119 413).
Kraft discloses and shows a gearshift arrangement comprising:
a first shift fork (8) and a first shift rod (4), wherein the first shift rod is movable along a first shift rod axis (parallel to arrow 2) and is configured to move the first shift fork between at least two positions,
wherein the first shift fork comprises a first end (at 12) which form a contacting interface with the first shift rod, a second end (at 10), opposite to the first end, which optionally is configured to engage with a first clutch for a first gearwheel (not shown, Abstract), and a pivot (at 6), 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 which is substantially parallel with the first shift rod axis of the first shift rod (Abstract).
Cl. 2 – at least one of the first curved surface and the second surface has an involute profile.
Cl. 3 – the first shift fork, at the first end thereof (12), comprises a tooth member and wherein the first shift rod comprises a groove (24), wherein the tooth member is received in the groove, and wherein the first curved surface is a tooth member side surface of the tooth member and the second surface is a groove side surface of the groove.
Cl. 4 – the tooth member is configured to rotate with respect to the groove when the first shift rod moves the first shift fork between its at least two positions, and wherein the tooth member is configured such that a thickness of the tooth member, as measured between two planes perpendicular to the first shift rod axis, is substantially the same at any position of the first shift fork when the first shift rod moves the first shift fork between its at least two positions (in other words, the width of the gear tooth does not change).
Cl. 5 – the tooth member and the groove are configured such that the tooth member is arranged with a play in the groove (see spacing between the tooth member and groove).
Cl. 6 – the groove side surface is a planar surface which is perpendicular to the first shift rod axis (in so much as the groove side surface is perpendicular to the shift rod axis as described by the specification, so too is the groove side surface from Kraft perpendicular to the shift rod).
Cl. 15 – the gearshift arrangement is for a vehicle.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kraft as applied to claim 1, in view of Ruppert (DE 10 2008 024 317).
Kraft discloses and shows the invention of claim 1 as described elsewhere above but does not include a biasing element as claimed. Ruppert discloses and shows a gearshift arrangement including a biasing element (see Fig. 1), the biasing element not only biases the shift fork downward but also locks the shift rod into the selected axial position, preventing unwanted movement, unwanted gear shifting and damage to the transmission.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kraft’s gearshift arrangement to include a biasing element that biases the shift fork downward and locks the shift rod into the selected axial position, thereby preventing unwanted movement, unwanted gear shifting and damage to the transmission as offered by Ruppert.
Claims 8, 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Kraft as applied to claim 1.
Kraft discloses and shows the invention of claim 1 as described elsewhere above to include cylindrical supporting surface, but not with a radius extending from the pivot. Such is deemed to be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in view of the following:
MPEP 2144.04(IV)(B) which states, “[I]t has been noted that limitations relating to the shape are not sufficient to be patentably distinguishable over the prior art” in citing In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966).
MPEP 2144.04(IV)(A), which states, “limitations relating to the size are not sufficient to be patentably distinguishable over the prior art” in citing In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976).
MPEP 2144 clearly states that “The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rational may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law" (emphasis added).
MPEP 2144 also states, “If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection” (emphasis added). However, Applicant’s disclosure fails to set forth any unexpected result (i.e., criticality) due to any specific location over any other and even Applicant’s specification as filed calls this feature an option at paragraph 12. Accordingly, the claimed orientation lacks any criticality such that a rejection based solely on case law is appropriate.
Regarding claims 9 and 12, Kraft further includes a housing (not shown) and first gearwheel (Abstract), where the first shift fork is movable between the at least two positions, comprising a first shift fork first position in which the first gearwheel is locked to the housing (by way of being locked to its corresponding shaft which is mounted withing the housing) by the first shift fork and a first shift fork second position in which the first gearwheel is freely rotatable with respect to the housing (such is typical of gearwheel transmissions).
Kraft does not include a second shift fork, second shift rod and second gearwheel. Including such and arranging them along a common axis would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in view of:
MPEP 2144.04(VI)(B-C) which states, “the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced” in citing In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960); and
MPEP 2144.04(VI)(C) which states, “shifting the position of the starting switch would not have modified the operation of the device” in citing In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kraft as applied to claim 9, in view of Norheim et al. (WO 2007/064221).
Kraft discloses and shows the invention of claim 9 as described elsewhere above. Kraft does not describe a second shift rod where the first and second shift rods are configured to abut one another. Norheim discloses and shows at Fig. 21, for example, a gearshift arrangement including a first shift rod (45) and a second shift rod (46) configured to abut one another such that movement to a forbidden gear position is prevented, wherein the forbidden gear position may comprise 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 (first gear position and second gear position, for example).
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 Kraft gearshift arrangement to include the first and second shafts being configured to abut, such that a forbidden (unwanted) gear position is prevented as shown by Norheim.
Cl. 11 – end portions of the first and second shift rods are configured to abut, such that movement to the forbidden gear position is prevented.
Allowable Subject Matter
Claims 13 and 14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include 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: while it is well known to have a gearshift arrangement to include first and second shift rods coaxial with each other, first and second pistons fixed to the first and second shift rods, respectively, a first chamber corresponding to the first shift rod and first piston, a second shaft corresponding to the second shift rod and second piston and a third chamber partly corresponding to the first shift rod and first piston and partly corresponding to the second shift rod and second piston, the prior art lacks a first shift rod first sleeve, first shift rod second sleeve, second shift rod first sleeve and second shift rod second sleeve.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOBBY RUSHING, JR whose telephone number is (571)270-0501. The examiner can normally be reached Monday - Friday, 8AM-5PM EST.
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/BOBBY RUSHING, JR/ Primary Examiner, Art Unit 3618