DETAILED CORRESPONDENCE
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 .
Response to Amendment
The amendment filed 06/30/2026 has been entered. Claims 14-18, 23-29 and 34-41 remain pending in the application. Applicant’s amendments to the claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 03/30/2026.
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 14-18, 25-29 and 34-41 is/are rejected under 35 U.S.C. 103 as being unpatentable over Evans (US 7211971 B2) in view of Collier-Hallman (US 6949901 B1).
Regarding claim 14, Evans discloses an actuating mechanism (see Fig. 3; 10), comprising: a transmission element (see Fig. 4; 36) configured to be displaced parallel to a transmission direction (up/down direction in Fig. 3); an actuating element (see Fig. 3; 20) configured to displace the transmission element in the transmission direction in response to an actuating movement of the actuating element (see column 3, lines 58-60; “Rotation of the driven shaft 20 in turn axially displaces the washer 36 along the driven shaft 20”); a conversion mechanism (external threads of 20 and internal threads of 36) between the transmission element and the actuating element (see column 3 lines 41-43; “A drive washer 36 includes an internally threaded throughbore 38 which is threadably mounted to the driven shaft 20), the conversion mechanism being configured to convert the actuating movement of the actuating element into displacement of the transmission element in the transmission direction (see column 3, lines 58-60; “Rotation of the driven shaft 20 in turn axially displaces the washer 36 along the driven shaft 20”); a bracing element (see Fig. 4; 44) configured to introduce a prestress at least into the conversion mechanism (see column 3, lines 49-51; “A compression spring 44 in a state of compression is disposed between the washer 36 and a closed end 46 of the plunger 28) in a load-free state of the conversion mechanism (according to paragraph [0002] of the instant application, the load-free state is when the actuating element is not carrying out an actuating movement. Therefore, the load-free state of Evans is when driven shaft 20 is not carrying out an actuating movement) such that backlash in the actuating mechanism is reduced, wherein the prestress introduces a base loading into the conversion mechanism holding the transmission element and the actuating element in contact with one another (see column 3, lines 49-51; “A compression spring 44 in a state of compression is disposed between the washer 36 and a closed end 46 of the plunger 28”. Therefore, since the spring 44 is in compression, a force is applied to washer 36. This force is transferred to the internal threads of 36 which are pressed into contact with the external threads of 20. The contact force between the internal threads of 36 and the external threads of 20 reduces backlash between the two elements); and a drive apparatus (see Fig. 3; 14) configured to move the actuating element in order to carry out the actuating movement (see Fig. 4; via 26), wherein the drive apparatus comprises an electric motor (see column 3, line 10; “An electric motor 14”). Evans fails to disclose a reluctance torque applied by the electric motor. However, Collier-Hallman teaches a reluctance torque applied by the electric motor (see column 4 lines 1-3; “the motor 60 could comprise other types of electrical motors, such as a switched-reluctance motor”; note that switched-reluctance motors inherently apply a reluctance torque to align the poles of the stator and rotor). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Evans with a switched-reluctance motor, as taught by Collier-Hallman, to provide a reliable and low-cost variable-speed drive comprising low rotor inertia and high torque/inertia ratio; to provide an electric motor which eliminates winding losses in the stator because there is no windings in the rotor side; to provide an electric motor with a rigid structure and absence of permanent magnets and rotor windings; to provide an electric motor that can be used in extremely high speed application and the maximum possible rotor temperature is high, since there are no permanent magnets and rotor windings. As a result of the combination, the following limitations would necessarily result: the drive apparatus (Collier-Hallman, switched-reluctance motor) is configured to support the prestress (Evans, via 44) using a holding torque (Collier-Hallman, inherent holding torque of a switched-reluctance motor) in the load-free state of the conversion mechanism (Evans, state when driven shaft 20 is not carrying out an actuating movement), wherein the holding torque supporting the prestress in the load-free state comprises a reluctance torque applied by the electric motor (Collier-Hallman, inherent reluctance torque of a switched-reluctance motor).
Regarding claim 15, Evans discloses the bracing element (44) is configured to apply the prestress to the transmission element (36).
Regarding claim 16, Evans discloses the bracing element (44) is a spring or an elastic rubber element (see column 3 line 51; “spring 44”); the bracing element is supported in a housing of the actuating mechanism (see Fig. 3; 12) or on one or more elements of the actuating mechanism (28; 36); and the bracing element is in contact, directly or via one or more intermediate elements, with one or both of the transmission element (36) and the actuating element (20).
Regarding claim 17, Evans discloses the conversion mechanism (external threads of 20 and internal threads of 36) is configured to convert a rotational movement of the actuating element (20) into the displacement of the transmission element (36) in the transmission direction (up/down direction in Fig. 3).
Regarding claim 18, Evans discloses the conversion mechanism (external threads of 20 and internal threads of 36) includes a toothing system, a ball screw drive, a transmission thread, a spindle drive, or a worm thread (transmission thread between 20 and 36).
Regarding claim 25, Evans discloses a clutch actuator, comprising: an actuating mechanism (see Fig. 3; 10) configured to actuate a clutch (see column 4, lines 5-9; “the linear actuator 10 may be utilized in any application requiring a linear actuator, e.g. a vehicle hood release, a vehicle gas cap release, a vehicle trunk release, etc. as well as non-automotive applications such as security systems”. Therefore, the actuator of Evans is inherently capable of actuating a clutch), the actuator mechanism having a transmission element (see Fig. 4; 36) configured to be displaced parallel to a transmission direction (up/down direction in Fig. 3); an actuating element (see Fig. 3; 20) configured to displace the transmission element in the transmission direction in response to an actuating movement of the actuating element (see column 3, lines 58-60; “Rotation of the driven shaft 20 in turn axially displaces the washer 36 along the driven shaft 20”); a conversion mechanism (external threads of 20 and internal threads of 36) between the transmission element and the actuating element (see column 3 lines 41-43; “A drive washer 36 includes an internally threaded throughbore 38 which is threadably mounted to the driven shaft 20), the conversion mechanism being configured to convert the actuating movement of the actuating element into displacement of the transmission element in the transmission direction (see column 3, lines 58-60; “Rotation of the driven shaft 20 in turn axially displaces the washer 36 along the driven shaft 20”); a bracing element (see Fig. 4; 44) configured to introduce a prestress at least into the conversion mechanism (see column 3, lines 49-51; “A compression spring 44 in a state of compression is disposed between the washer 36 and a closed end 46 of the plunger 28) in a load-free state of the conversion mechanism (according to paragraph [0002] of the instant application, the load-free state is when the actuating element is not carrying out an actuating movement. Therefore, the load-free state of Evans is when driven shaft 20 is not carrying out an actuating movement) such that backlash in the actuating mechanism is reduced, wherein the prestress introduces a base loading into the conversion mechanism holding the transmission element and the actuating element in contact with one another (see column 3, lines 49-51; “A compression spring 44 in a state of compression is disposed between the washer 36 and a closed end 46 of the plunger 28. Therefore, since the spring 44 is in compression, a force is applied to washer 36. This force is transferred to the internal threads of 36 which are pressed into contact with the external threads of 20. The contact force between the internal threads of 36 and the external threads of 20 reduces backlash between the two elements); and a drive apparatus (see Fig. 3; 14) configured to move the actuating element in order to carry out the actuating movement (see Fig. 4; via 26), wherein the drive apparatus comprises an electric motor (see column 3 lines 63-64; “(see column 3, line 10; “An electric motor 14”). Evans fails to disclose a reluctance torque applied by the electric motor. However, Collier-Hallman teaches a reluctance torque applied by the electric motor (see column 4 lines 1-3; “the motor 60 could comprise other types of electrical motors, such as a switched-reluctance motor”; note that switched-reluctance motors inherently apply a reluctance torque to align the poles of the stator and rotor). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Evans with a switched-reluctance motor, as taught by Collier-Hallman, to provide a reliable and low-cost variable-speed drive comprising low rotor inertia and high torque/inertia ratio; to provide an electric motor which eliminates winding losses in the stator because there is no windings in the rotor side; to provide an electric motor with a rigid structure and absence of permanent magnets and rotor windings; to provide an electric motor that can be used in extremely high speed application and the maximum possible rotor temperature is high, since there are no permanent magnets and rotor windings. As a result of the combination, the following limitations would necessarily result: the drive apparatus (Collier-Hallman, switched-reluctance motor) is configured to support the prestress (Evans, via 44) using a holding torque (Collier-Hallman, inherent holding torque of a switched-reluctance motor) in the load-free state of the conversion mechanism (Evans, external threads of 20 and internal threads of 36), wherein the holding torque supporting the prestress in the load-free state comprises a reluctance torque applied by the electric motor (Collier-Hallman, inherent reluctance torque of a switched-reluctance motor).
Regarding claim 26, Evans discloses a transmission actuator, comprising: an actuating mechanism (see Fig. 3; 10) configured to actuate a transmission (see column 4, lines 5-9; “the linear actuator 10 may be utilized in any application requiring a linear actuator, e.g. a vehicle hood release, a vehicle gas cap release, a vehicle trunk release, etc. as well as non-automotive applications such as security systems”. Therefore, the actuator of Evans is inherently capable of actuating a transmission), the actuator mechanism having a transmission element (see Fig. 4; 36) configured to be displaced parallel to a transmission direction (up/down direction in Fig. 3); an actuating element (see Fig. 3; 20) configured to displace the transmission element in the transmission direction in response to an actuating movement of the actuating element (see column 3, lines 58-60; “Rotation of the driven shaft 20 in turn axially displaces the washer 36 along the driven shaft 20”); a conversion mechanism (external threads of 20 and internal threads of 36) between the transmission element and the actuating element (see column 3 lines 41-43; “A drive washer 36 includes an internally threaded throughbore 38 which is threadably mounted to the driven shaft 20), the conversion mechanism being configured to convert the actuating movement of the actuating element into displacement of the transmission element in the transmission direction (see column 3, lines 58-60; “Rotation of the driven shaft 20 in turn axially displaces the washer 36 along the driven shaft 20”); a bracing element (see Fig. 4; 44) configured to introduce a prestress at least into the conversion mechanism (see column 3, lines 49-51; “A compression spring 44 in a state of compression is disposed between the washer 36 and a closed end 46 of the plunger 28) in a load-free state of the conversion mechanism (according to paragraph [0002] of the instant application, the load-free state is when the actuating element is not carrying out an actuating movement. Therefore, the load-free state of Evans is when driven shaft 20 is not carrying out an actuating movement) such that backlash in the actuating mechanism is reduced, wherein the prestress introduces a base loading into the conversion mechanism holding the transmission element and the actuating element in contact with one another (see column 3, lines 49-51; “A compression spring 44 in a state of compression is disposed between the washer 36 and a closed end 46 of the plunger 28. Therefore, since the spring 44 is in compression, a force is applied to washer 36. This force is transferred to the internal threads of 36 which are pressed into contact with the external threads of 20. The contact force between the internal threads of 36 and the external threads of 20 reduces backlash between the two elements); and a drive apparatus (see Fig. 3; 14) configured to move the actuating element in order to carry out the actuating movement (see Fig. 4; via 26), wherein the drive apparatus comprises an electric motor (see column 3 lines 63-64; “(see column 3, line 10; “An electric motor 14”). Evans fails to disclose a reluctance torque applied by the electric motor. However, Collier-Hallman teaches a reluctance torque applied by the electric motor (see column 4 lines 1-3; “the motor 60 could comprise other types of electrical motors, such as a switched-reluctance motor”; note that switched-reluctance motors inherently apply a reluctance torque to align the poles of the stator and rotor). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Evans with a switched-reluctance motor, as taught by Collier-Hallman, to provide a reliable and low-cost variable-speed drive comprising low rotor inertia and high torque/inertia ratio; to provide an electric motor which eliminates winding losses in the stator because there is no windings in the rotor side; to provide an electric motor with a rigid structure and absence of permanent magnets and rotor windings; to provide an electric motor that can be used in extremely high speed application and the maximum possible rotor temperature is high, since there are no permanent magnets and rotor windings. As a result of the combination, the following limitations would necessarily result: the drive apparatus (Collier-Hallman, switched-reluctance motor) is configured to support the prestress (Evans, via 44) using a holding torque (Collier-Hallman, inherent holding torque of a switched-reluctance motor) in the load-free state of the conversion mechanism (Evans, external threads of 20 and internal threads of 36), wherein the holding torque supporting the prestress in the load-free state comprises a reluctance torque applied by the electric motor (Collier-Hallman, inherent reluctance torque of a switched-reluctance motor).
Regarding claim 27, Evans discloses the bracing element (44) is configured to apply a force in the transmission direction (up/down direction in Fig. 3) to the transmission element (36).
Regarding claim 28, Evans discloses the bracing element (44) is configured to apply a force in the transmission direction (up/down direction in Fig. 3) to the transmission element (36).
Regarding claim 29, Evans discloses the bracing element (44) is configured to apply a force in the transmission direction (up/down direction in Fig. 3) to the transmission element (36).
Regarding claim 34, Evans discloses the actuating element (20) is rotatable about a first axis (axis of 20) and the transmission element (36) is displaced along a second axis (axis of 36). Evans fails to disclose the second axis is perpendicular to the first axis. However, Collier-Hallman teaches the second axis (see Fig. 2; axis of 80) is perpendicular to the first axis (axis of 76). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Evans with the second axis being perpendicular to the first axis, as taught by Collier-Hallman, to allow for different arrangements of torque transfer between the motor and the transmission element which can accommodate different arrangements and sizing requirements such as width and height requirements. Additionally, it has been held that a rearrangement of parts, which does not modify the operation of the device, is an obvious matter of design choice. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). In this instance, rearranging the coaxial axes of the actuating element and the transmission element of Evans to be perpendicular would still allow torque transfer from the motor to the actuating element, and therefore is an obvious design choice.
Regarding claim 35, Evans discloses the actuating element (20) is rotatable about a first axis (axis of 20) and the transmission element (36) is displaced along a second axis (axis of 36). Evans fails to disclose the second axis is perpendicular to the first axis. However, Collier-Hallman teaches the second axis (see Fig. 2; axis of 80) is perpendicular to the first axis (axis of 76). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Evans with the second axis being perpendicular to the first axis, as taught by Collier-Hallman, to allow for different arrangements of torque transfer between the motor and the transmission element which can accommodate different arrangements and sizing requirements such as width and height requirements. Additionally, it has been held that a rearrangement of parts, which does not modify the operation of the device, is an obvious matter of design choice. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). In this instance, rearranging the coaxial axes of the actuating element and the transmission element of Evans to be perpendicular would still allow torque transfer from the motor to the actuating element, and therefore is an obvious design choice.
Regarding claim 36, Evans discloses the actuating element (20) is rotatable about a first axis (axis of 20) and the transmission element (36) is displaced along a second axis (axis of 36). Evans fails to disclose the second axis is perpendicular to the first axis. However, Collier-Hallman teaches the second axis (see Fig. 2; axis of 80) is perpendicular to the first axis (axis of 76). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Evans with the second axis being perpendicular to the first axis, as taught by Collier-Hallman, to allow for different arrangements of torque transfer between the motor and the transmission element which can accommodate different arrangements and sizing requirements such as width and height requirements. Additionally, it has been held that a rearrangement of parts, which does not modify the operation of the device, is an obvious matter of design choice. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). In this instance, rearranging the coaxial axes of the actuating element and the transmission element of Evans to be perpendicular would still allow torque transfer from the motor to the actuating element, and therefore is an obvious design choice.
Regarding claim 37, the combination of claim 14 elsewhere above would necessarily result in the following limitations: in the load-free state, the actuating element does not carry out the actuating movement (Evans, the state when driven shaft 20 is not carrying out an actuating movement), but the drive apparatus (Collier-Hallman, switched-reluctance motor) applies the holding torque (Collier-Hallman, inherent holding torque of a switched-reluctance motor) to support the prestress introduced by the bracing element (Evans, 44).
Regarding claim 38, the combination of claim 14 elsewhere above would necessarily result in the following limitations: the holding torque (Collier-Hallman, inherent holding torque of a switched-reluctance motor) applied by the drive apparatus (Collier-Hallman, switched-reluctance motor) in the load-free state of the conversion mechanism (Evans, the state when driven shaft 20 is not carrying out an actuating movement) counteracts the prestress (Evans, column 3, lines 49-51; “A compression spring 44 in a state of compression is disposed between the washer 36 and a closed end 46 of the plunger 28) to introduce the prestress with a defined magnitude constantly into the conversion mechanism (Evans, external threads of 20 and internal threads of 36).
Regarding claim 39, the combination of claim 14 elsewhere above would necessarily result in the following limitations: at least part of the prestress is supported in the conversion mechanism (Evans; external threads of 20 and internal threads of 36) and transmitted via the conversion mechanism to the drive apparatus (Evans; 14), the drive apparatus being configured to counteract the prestress such that the prestress is constantly introduced into the conversion mechanism with a defined magnitude (Collier-Hallman, inherent holding torque of a switched-reluctance motor).
Regarding claim 40, the combination of claim 25 elsewhere above would necessarily result in the following limitations: at least part of the prestress is supported in the conversion mechanism (Evans; external threads of 20 and internal threads of 36) and transmitted via the conversion mechanism to the drive apparatus (Evans; 14), the drive apparatus being configured to counteract the prestress such that the prestress is constantly introduced into the conversion mechanism with a defined magnitude (Collier-Hallman, inherent holding torque of a switched-reluctance motor).
Regarding claim 41, the combination of claim 26 elsewhere above would necessarily result in the following limitations: at least part of the prestress is supported in the conversion mechanism (Evans; external threads of 20 and internal threads of 36) and transmitted via the conversion mechanism to the drive apparatus (Evans; 14), the drive apparatus being configured to counteract the prestress such that the prestress is constantly introduced into the conversion mechanism with a defined magnitude (Collier-Hallman, inherent holding torque of a switched-reluctance motor).
Response to Arguments
Applicant's arguments filed 06/30/2026 have been fully considered but they are not persuasive. Regarding Applicant’s argument that Evans and Collier, either alone or in combination, do not disclose or suggest “a bracing element configured to introduce a prestress at least into the conversion mechanism in a load-free state of the conversion mechanism such that backlash in the actuating mechanism is reduced, wherein the prestress introduces a base loading into the conversion mechanism holding the transmission element and the actuating element in contact with one another”, the Examiner respectfully disagrees.
First, as noted in the rejection of the independent claims 1, 25 and 26 above, paragraph [0002] of the instant application reads “the load-free state when the actuating element is not carrying out an actuating movement”. As can be seen from Fig. 3 of Evans, when the externally threaded driven shaft 20 (actuating element) is not rotating (carrying out an actuating movement), the external threads of 20 and internal threads of 36 (conversion mechanism) is in a load-free state. Therefore, the state of the actuator 10 in Fig. 3 with solid lines is in a load-free state, the state of the actuator with dashed lines is in a load-free state, and the state of the actuator at any point in between the solid lines and dashed lines when the driven shaft is not being rotated is in a load-free state.
Second, Applicant argues that the Examiner’s conclusion is not based on an express teaching of Evans. While Evans does not explicitly disclose spring 44 reduces backlash, MPEP 2112 states that “The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103.” In this instance, the Examiner is relying on the implicit disclosure of Evans. More specifically, paragraph 3 lines 49-53 which reads “A compression spring 44 in a state of compression is disposed between the washer 36 and a closed end 46 of the plunger 28. The spring 44 thus maintains the closed end 46 of the plunger 28 at its maximum distance from the washer 36”. From the disclosure of Evans, it is clear that the spring 44 exerts a force on the washer 36 and the plunger 28. This force, and also the reduction in backlash, is implicitly disclosed in Evans, and reliance on implicit disclosures is permitted by MPEP 2122.
Third, using the study of classical mechanics and Newton’s laws of motion, it is clear that the spring 44 of Evans introduces a prestress into the mechanism and reduces the backlash between the threads of shaft 20 and the threads of the washer 36, which will be apparent after the discussion below. As noted above, Evans discloses “A compression spring 44 in a state of compression is disposed between the washer 36 and a closed end 46 of the plunger 28”. In Fig. 3 of Evans, since spring 44 is in compression, the spring exerts a downward force on plunger 28 and an upward force on washer 36. The upward force that is exerted on washer 36 moves the washer in the upward direction. However, since the washer 36 has internal threads and is threaded on the shaft 20, which has external threads, the upward movement of washer 36 is transferred from the internal threads to the external threads. This transfer of motion can only happen if the internal threads of the washer 36 are in contact with the external threads of the shaft 20. Therefore, when the internal threads and the external threads are pushed into contact with each other, by the compression spring 44, backlash between the threads is reduced. Therefore, the features of claims 1, 25 and 26 are inherent in the prior art of Evans.
Last, the Examiner notes that MPEP 2112(II) reads “There is no requirement that a person of ordinary skill in the art would have recognized the inherent disclosure at the relevant time, but only that the subject matter is in fact inherent in the prior art reference. Schering Corp. v. Geneva Pharm. Inc., 339 F.3d 1373, 1377, 67 USPQ2d 1664, 1668 (Fed. Cir. 2003)”. Applicant’s arguments directed toward the prior art of Evans not explicitly disclosing the limitations of the independent claims and therefore cannot be relied upon for a rejection are patentably false. MPEP 2122(II) is absolutely clear that “[T]he fact that a characteristic is a necessary feature or result of a prior-art embodiment (that is itself sufficiently described and enabled) is enough for inherent anticipation, even if that fact was unknown at the time of the prior invention.”
Given at least the arguments presented above, it is clear the compression spring 44 of Evans reduces the backlash between the threads of the washer 36 and the threads of shaft 20, i.e., the conversion mechanism. Therefore, Evans in view of Collier-Hallman disclose all the limitations of independent claims 1, 25 and 26.
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.
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/JOSEPH BROWN/Primary Examiner, Art Unit 3618
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