www.uspto.gov
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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`
`16/100,669
`
`08/10/2018
`
`Yoshitaka KOCHIDOMARI
`
`06664720004
`
`6814
`
`STERNE, KESSLER, GOLDSTEIN & FOX P.L.L.C.
`1100 NEW YORK AVENUE, N.W.
`WASHINGTON, DC 20005
`
`DOLAK. JAMES M
`
`PAPER NUMBER
`
`ART UNIT
`
`3618
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/31/2019
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`e-offiee @ sternekessler. com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`0/7709 A0170” Summary
`
`Application No.
`16/100,669
`Examiner
`JAMES M DOLAK
`
`Applicant(s)
`KOCHIDOMARI etal.
`Art Unit
`AIA (FITF) Status
`3618
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed after SIX (6) MONTHS from the mailing
`date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 11/08/2019.
`CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)[:] This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`
`4):] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expade Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)
`
`Claim(s) His/are pending in the application.
`
`5a) Of the above Claim(s)
`
`is/are withdrawn from consideration.
`
`
`
`[:1 Claim(ss)
`
`is/are allowed.
`
`Claim(ss) 1_—4 is/are rejected.
`
`D Claim(ss_) is/are objected to.
`
`) ) ) )
`
`S)
`are subject to restriction and/or election requirement
`[:1 Claim(s
`* If any claims have been determined aflowable. you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.jsp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`
`10)|:l The specification is objected to by the Examiner.
`
`11). The drawing(s) filed on 8/10/2018 is/are: a)[:] accepted or b). objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`
`12)D Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:i All
`
`b)C] Some**
`
`c)C] None of the:
`
`1.[:] Certified copies of the priority documents have been received.
`
`2C] Certified copies of the priority documents have been received in Application No.
`
`SD Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) E] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20191112
`
`

`

`Application/Control Number:16/100,669
`Art Unit: 3618
`
`Page 2
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`DETAILED CORRESPONDENCE
`
`Notice of Pre-AIA or AIA Status
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`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Election/Restrictions
`
`2.
`
`Applicant’s election without traverse of Species |||(a) (Fig.6) in the reply filed on
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`11/08/2019 is acknowledged.
`
`Information Disclosure Statement
`
`3.
`
`The information disclosure statement (IDS) submitted on 8/10/2018 was filed in
`
`compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure
`
`statement is being considered by the examiner.
`
`Drawings
`
`4.
`
`The drawings are objected to under 37 CFR 1.83(a). The drawings must show
`
`every feature of the invention specified in the claims. Therefore, the “boarding floor,
`” II
`H II
`
`“front side support portion,
`
`rear side support portion,
`
`arrangement portion” (Claim
`
`1/3) must all be shown and labeled or the feature(s) canceled from the claim(s). No
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`new matter should be entered.
`
`Corrected drawing sheets in compliance with 37 CFR 1.121 (d) are required in
`
`reply to the Office action to avoid abandonment of the application. Any amended
`
`replacement drawing sheet should include all of the figures appearing on the immediate
`
`prior version of the sheet, even if only one figure is being amended. The figure or figure
`
`number of an amended drawing should not be labeled as “amended.” If a drawing figure
`
`is to be canceled, the appropriate figure must be removed from the replacement sheet,
`
`

`

`Application/Control Number:16/100,669
`Art Unit: 3618
`
`Page 3
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`and where necessary, the remaining figures must be renumbered and appropriate
`
`changes made to the brief description of the several views of the drawings for
`
`consistency. Additional replacement sheets may be necessary to show the renumbering
`
`of the remaining figures. Each drawing sheet submitted after the filing date of an
`
`application must be labeled in the top margin as either “Replacement Sheet” or “New
`
`Sheet” pursuant to 37 CFR 1.121 (d).
`
`If the changes are not accepted by the examiner,
`
`the applicant will be notified and informed of any required corrective action in the next
`
`Office action. The objection to the drawings will not be held in abeyance.
`
`Claim Rejections - 35 USC § 1 12
`
`5.
`
`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.
`
`6.
`
`Claims 1-4 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 pre-AIA the
`
`applicant regards as the invention. Regarding claims 1-4, the claim recites the open-
`
`ended clause "configured" (Claim 1/3: line 7, 9; Claim 2; Claim 4), which renders the
`
`claim indefinite, since it's not clear whether the claimed function is actually taking place
`
`or not. It has been held that the open-ended recitations stating that an element is
`
`capable to perform a function (e.g., "configured to", "adapted to", etc.) are not the
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`positive limitations but only require the ability to so perform. They do not constitute a
`
`

`

`Application/Control Number:16/100,669
`Art Unit: 3618
`
`Page 4
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`limitation in any patentable sense. See In re Hutchinson, 69 USPQ 138. Just because
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`something is "configured to" do something (i.e. is "capable of" doing something), doesn't
`
`actually mean it does it. "[A]pparatus claims cover what a device is, not what a device
`
`does." Hewlett-Packard Co. v.Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d
`
`1525, 1528 (Fed. Cir. 1990) (emphasis in original). The Office hereby notes that
`
`"configured to" does not explicitly denote how features(s) are constructed and/or
`
`associated with other claimed limitations; whereas the claim is amenable to two or more
`
`plausible claim constructions. If a claim is amenable to two or more plausible claim
`
`constructions, then the claim may be deemed indefinite. See Ex parte Miyazaki, 89
`
`USPQ2d 1207 (Bd. Pat. App. & Inter. 2008) (precedential). Applicant is required to use
`
`definitive and positive statements while reciting the structure and functions of the
`
`claimed apparatus (e.g. "a locking arm chamfer [that is configured to engage] --
`
`engaging-- the lock pin chamfer"). Appropriate correction is required.
`
`7.
`
`Claims 2-4 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA),
`
`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 pre-AlA the
`
`applicant regards as the invention. Specifically, the limitation “as a common power
`
`source” (Claims 2 and 3) is unclear as currently drafted and therefore renders the
`
`claims indefinite. Appropriate correction is required
`
`Claim Rejections - 35 USC § 103
`
`8.
`
`In the event the determination of the status of the application as subject to NA 35
`
`U.S.C. 102 and 103 (or as subject to pre-AlA 35 U.S.C. 102 and 103) is incorrect, any
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`correction of the statutory basis for the rejection will not be considered a new ground of
`
`

`

`Application/Control Number:16/100,669
`Art Unit: 3618
`
`Page 5
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`rejection if the prior art relied upon, and the rationale supporting the rejection, would be
`
`the same under either status.
`
`9.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102, if the differences between the subject matter sought to be patented
`and the prior art are such that the subject matter as a whole would have been obvious at the
`time the invention was made to a person having ordinary skill in the art to which said subject
`matter pertains. Patentability shall not be negatived by the manner in which the invention was
`made.
`
`10.
`
`Claims 1-4 are rejected under pre-AIA 35 U.S.C. 103(a) as being
`
`unpatentable over Suzuki (US 6,253,865 B2) in view of Radev (US 7,497,285).
`
`[Claim 1] Regarding Claim 1, Suzuki teaches: A hybrid utility vehicle (See, e.g.
`
`Fig.1-9, 1) comprising: a pair of front wheels (See, e.g. Fig.1-9, 13); a pair of rear
`
`wheels (See, e.g. Fig.1-9, 14); a rear differential gear unit (See, e.g. Fig.1-9, 78) for
`
`differentially connecting the rear wheels (See, e.g. Fig.1-9); an internal combustion
`
`engine (See, e.g. Fig.1-9, 61) configured as a power source of at least the rear wheels
`
`(See, e.g. Fig.1-9); an electric motor (See, e.g. Fig.1-9, 43); a body frame (See, e.g.
`
`Fig.1-9, 2+3) comprising a front side support portion (See, e.g. Fig.1-9, 3a) for
`
`supporting the front wheels (See, e.g. Fig.1-9), a rear side support portion (See, e.g.
`
`Fig.1-9, 3b) for supporting the rear wheels (See, e.g. Fig.1-9), and an arrangement
`
`portion (See, e.g. Fig.1-9, 5+6+11) comprising a driver's seat (See, e.g. Fig.1-9, )
`
`disposed between the front side support portion and the rear side support portion (See,
`
`e.g. Fig.1-9); and a boarding floor (See, e.g. Fig.1-9, above 21) positioned in front of the
`
`arrangement portion of the driver's seat on the body frame (See, e.g. Fig.1-9); wherein
`
`

`

`Application/Control Number:16/100,669
`Art Unit: 3618
`
`Page 6
`
`the internal combustion engine and the electric motor are disposed rearward of the
`
`boarding floor (See, e.g. Fig.1-9).
`
`Suzuki fails to explicitly teach: a front differential gear unit for differentially
`
`connecting the front wheels and wherein the electric motor is configured as a power
`
`source of at least the front wheels.
`
`However, Radev discloses: a similar hybrid vehicle (See, e.g., Radev: Fig.1-9,
`
`10+12) comprising: an electric motor (See, e.g., Radev: Fig.1-9, 17) and a front
`
`differential gear unit (See, e.g., Radev: Fig.1-9, 33) for differentially connecting the front
`
`wheels (See, e.g., Radev: Fig.1-9, 13+12) and wherein the electric motor is configured
`
`as a power source of at least the front wheels (See, e.g., Radev: Fig.1-9).
`
`Radev teaches that it is well known in the art of vehicle design to provide the
`
`vehicle with a front differential gear unit for differentially connecting the front wheels and
`
`wherein the electric motor is configured as a power source of at least the front wheels.
`
`Therefore, it would have been obvious to one of ordinary skill in the art at the time of the
`
`invention to provide the system taught by Suzuki modified to feature a front differential
`
`gear unit for differentially connecting the front wheels and wherein the electric motor is
`
`configured as a power source of at least the front wheels such as taught by Radev, for
`
`the purpose of providing a hybrid motor vehicle arrangement which would afford energy
`
`and cost savings, furthermore such an arrangement would provide greater four-wheel
`
`drive capability which can be essential for traction control in harsher terrain or icy
`
`roadway conditions. Moreover, the modification is obvious as no more than the use of
`
`familiar elements according to known methods in a manner that achieves predictable
`
`results. (See, e.g., KSR lnt’l Co. v. Teleflex Inc., 550 US. 398,416 (2007)).
`
`

`

`Application/Control Number:16/100,669
`Art Unit: 3618
`
`Page 7
`
`[Claim 2] Regarding Claim 2, the combination of Suzuki in view of Radev further
`
`teaches: wherein the front wheels and the rear wheels are configured to be driven by
`
`switching between a state in which the internal combustion engine is used as a common
`
`power source and a state in which the electric motor is used as a common power
`
`source (See, e.g., Suzuki: Fig.1-9 & See, e.g., Radev: Fig.1-9).
`
`[Claim 3] Regarding Claim 3, Suzuki teaches: A hybrid utility vehicle (See, e.g.
`
`Fig.1-9) comprising: a pair of front wheels (See, e.g. Fig.1-9, 13); a pair of rear wheels
`
`(See, e.g. Fig.1-9, 14); a rear differential gear unit (See, e.g. Fig.1-9, 78) for
`
`differentially connecting the rear wheels (See, e.g. Fig.1-9); an internal combustion
`
`engine (See, e.g. Fig.1-9, 61) configured as a common power source for the rear
`
`wheels (See, e.g. Fig.1-9); an electric motor (See, e.g. Fig.1-9, 43) configured as a
`
`common power source for the rear wheels (See, e.g. Fig.1-9); a body frame (See, e.g.
`
`Fig.1-9, 2+3) comprising a front side support portion (See, e.g. Fig.1-9, 3a) for
`
`supporting the front wheels (See, e.g. Fig.1-9), a rear side support portion (See, e.g.
`
`Fig.1-9, 3b) for supporting the rear wheels (See, e.g. Fig.1-9), an arrangement portion
`
`(See, e.g. Fig.1-9, 5+6+11) comprising a driver's seat (See, e.g. Fig.1-9, 11) disposed
`
`between the front side support portion and the rear side support portion (See, e.g. Fig.1-
`
`9); and a boarding floor (See, e.g. Fig.1-9, above 21) positioned in front of the
`
`arrangement portion of the driver's seat on the body frame (See, e.g. Fig.1-9); wherein
`
`the internal combustion engine and the electric motor are disposed rearward of the
`
`boarding floor (See, e.g. Fig.1-9).
`
`Suzuki fails to explicitly teach: a front differential gear unit for differentially
`
`connecting the front wheels and wherein the electric motor is configured as a common
`
`

`

`Application/Control Number:16/100,669
`Art Unit: 3618
`
`Page 8
`
`power source for the front wheels and an internal combustion engine configured as a
`
`common power source for the front wheels.
`
`However, Radev discloses: a similar hybrid vehicle (See, e.g., Radev: Fig.1-9,
`
`10+12) comprising: an electric motor (See, e.g., Radev: Fig.1-9, 17) an engine (See,
`
`e.g., Radev: Fig.1-9, 45) and a front differential gear unit (See, e.g., Radev: Fig.1-9, 33)
`
`for differentially connecting the front wheels (See, e.g., Radev: Fig.1-9, 13+12) and
`
`wherein the electric motor and engine are configured as a common power source for
`
`the front wheels (See, e.g., Radev: Fig.1-9).
`
`Radev teaches that it is well known in the art of vehicle design to provide the
`
`vehicle with a front differential gear unit for differentially connecting the front wheels and
`
`wherein the electric motor and engine are configured as common power sources for the
`
`front wheels. Therefore, it would have been obvious to one of ordinary skill in the art at
`
`the time of the invention to provide the system taught by Suzuki modified to feature a
`
`front differential gear unit for differentially connecting the front wheels and wherein the
`
`electric motor and engine are configured as common power sources for the front wheels
`
`such as taught by Radev, for the purpose of providing a hybrid motor vehicle
`
`arrangement which would afford energy and cost savings, furthermore such an
`
`arrangement would provide greater four-wheel drive capability which can be essential
`
`for traction control in harsher terrain or icy roadway conditions. Moreover, the
`
`modification is obvious as no more than the use of familiar elements according to known
`
`methods in a manner that achieves predictable results. (See, e.g., KSR lnt’l Co. v.
`
`Teleflex Inc, 550 us. 398,416 (2007)).
`
`

`

`Application/Control Number:16/100,669
`Art Unit: 3618
`
`Page 9
`
`[Claim 4] Regarding Claim 4, the combination of Suzuki in view of Radev further
`
`teaches: wherein the internal combustion engine and the electric motor are configured
`
`such that when the front wheels and the rear wheels are driven by the internal
`
`combustion engine (See, e.g., Radev: Fig.1-9), the electric motor is driven by the
`
`internal combustion engine (See, e.g., Radev: Fig.1-9), and such that when the front
`
`wheels and the rear wheels are driven by the electric motor, a transmission of power
`
`between the electric motor and the internal combustion engine is disconnected (See,
`
`e.g., Radev: Fig.1-9).
`
`Conclusion
`
`11.
`
`The prior art made of record and not relied upon is considered pertinent to
`
`applicant's disclosure, and can be found on the attached Notice of References Cited.
`
`12.
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JAMES M DOLAK whose telephone number is
`
`(571)270-7757. The examiner can normally be reached on 9-530 EST Monday-Friday.
`
`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, J ALLEN SHRIVER can be reached on 303-297-4337. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571 -
`
`273-8300.
`
`

`

`Application/Control Number:16/100,669
`Art Unit: 3618
`
`Page
`
`10
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`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
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`
`/JAMES M DOLAK/
`
`Primary Examiner, Art Unit 3618
`
`