DETAILED ACTION
Notice of Pre-AIA or AIA Status
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Objections
Claim 5 is objected to because of the following informalities:
Claim 5 recites “and/or”, which appears to contain an inadvertent grammatical error.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
Claims 1-8, 12-15, 18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by (US 8,601,891).
The current application is related to PCT/EP2021/053696 and the current claims are substantially similar in scope to the PCT claims. The examiner adopts, and incorporates herein by reference, the explanations of the closest prior art as set forth in the PCT (see the copy of the PCT/ISA/237 filed in this current application on 08/18/2022).1
Regarding claim 8, the coupling is inherently either a non-switchable or switchable coupling.
Regarding claim 20, the limitations are met by the prior art insomuch as the prior art discloses the outer part 36 holds a magnetic ring 43, where the magnetic ring 43 has a plurality of north poles and south poles.
Claim Rejections - 35 USC § 103
Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over (US 8,601,891), in view of (EP 1 764 325) and/or (EP 1 018 416).
The current application is related to PCT/EP2021/053696 and the current claims are substantially similar in scope to the PCT claims. The examiner adopts, and incorporates herein by reference, the explanations of the closest prior art as set forth in the PCT (see the copy of the PCT/ISA/237 filed in this current application on 08/18/2022). Further, regardless of the presence or absence of any express motivation to combine, the combination of the prior art would have been obvious to an ordinary practitioner since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.2
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over (US 8,601,891).
The current application is related to PCT/EP2021/053696 and the current claims are substantially similar in scope to the PCT claims. The examiner adopts, and incorporates herein by reference, the explanations of the closest prior art as set forth in the PCT (see the copy of the PCT/ISA/237 filed in this current application on 08/18/2022). It is reasoned that both the general engineering design of sensors and the ability to make predictable changes to such systems are expected to be well-understood by one of ordinary skill in the art; and it is reasoned that rearranging the placement of sensors to be either axial or radial with respect to another component, at least into a configuration similar to that which was already known in the art, is expected to be within the abilities of one of ordinary skill in the art. With respect to the limitations of claim 19, the claimed axial orientation of the sensor does not appear to modify the operation of the claimed device, and rearranging the device of the prior art to have the axial sensor orientation, as claimed, would not impact or change the function in any way. Therefore, since the only difference between the structure of the prior art and that of the claimed device is a recitation of relative orientation, and since the claimed device having the relative orientation would not function differently than the device of the prior art, the claimed device is not patentably distinct from the device of the prior art.3 Further, it has been held to be well-within the skill of one of ordinary skill in the art to rearrange the parts of a device according to design specifications, and the particular placement, arrangement, or ordering of respective elements would be an obvious matter of design choice.4
Response to Arguments
Applicant's arguments filed 10/22/2025 have been fully considered but they are not persuasive.
The thrust of Applicant’s arguments are that “the arrangement in Bochen is only capable of indirectly detecting movement of the spindle drive, and in turn, the movable part of the motor vehicle” and therefore “angular variations of the shaft disposed on the input side can only be inferred and not directly determined as required by the claims” (Remarks, pages 8-9, emphasis omitted). This is not persuasive. Contrary to Applicant’s assertion, as the claim is plainly read, the limitations include indirect determination which, as admitted by counsel, the prior art is capable of performing. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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 T. S. FIX whose telephone number is (571)272-8535. The examiner can normally be reached M-Th 10a-3p.
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 5712707778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T. SCOTT FIX/Primary Examiner, Art Unit 3618
1 See MPEP 1893.03(e)(II) which permits the examiner to adopt any portion or all of any report on patentability of the IPEA or ISA that would be relevant to U.S. practice, e.g., explanations of prior art, etc.
2 KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007)
3 In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) (Claims to a hydraulic power press which read on the prior art except with regard to the position of the starting switch were held unpatentable because shifting the position of the starting switch would not have modified the operation of the device.) [emphasis added]
4 In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975) (the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice) [emphasis added]