DETAILED ACTION
The Request for Continued Examination (RCE) filed 03/30/26 has been entered. Claims 1, 3-12 and 14-18 are still pending, with claims 2 and 13 being cancelled. In light of the claim amendments, the previous rejections are withdrawn. However, revised drawing objections and 112 and 102 rejections are detailed below. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
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 limitations of claims 7-9 and 11 must be shown or the feature(s) canceled from the claim(s). Specifically, amended claim 1 is now directly solely to the embodiment depicted in Figures 5 and 6 because of the recitation of the “intermediate element.” Claim 7 discloses a stop slidably mounted in a housing, depicted in Figures 1 and 2, and not present in Figures 5 and 6. Claims 8-9 disclose “locking device” 60, depicted in Figure 8, and not present in Figures 5 and 6. Claim 11 discloses the stop “ring” being mounted to an inner wall of the housing, depicted in Figures 3 and 4, and not present in Figures 5 and 6. The combination of some/all of these features in a single embodiment is not disclosed in the Drawings and constitutes new matter. No 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, 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 § 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 7-9 and 11 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, amended claim 1 is now directly solely to the embodiment depicted in Figures 5 and 6 because of the recitation of the “intermediate element.” Claim 7 discloses a stop slidably mounted in a housing, depicted in Figures 1 and 2, and not present in Figures 5 and 6. Claims 8-9 disclose “locking device” 60, depicted in Figure 8, and not present in Figures 5 and 6. Claim 11 discloses the stop “ring” being mounted to an inner wall of the housing, depicted in Figures 3 and 4, and not present in Figures 5 and 6. The combination of some/all of these features in a single embodiment is not disclosed in the Drawings and constitutes new matter.
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, 3-12 and 14-18 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.
All pending claims are rejected because claim 1 recites that “an intermediate element moveably arranged into a housing.” What does it mean for a component to be “moveably arranged into” another component? In particular, the additional word “into” at the end of this phrase causes ambiguity here. Does it mean that the intermediate element was moved into position inside the housing? Does it mean that the intermediate element is capable of changing positions within the housing? Does Applicant intend to recite --an intermediate element is slidably disposed within a housing--?
Claims 7 and 11-12 are further rejected because claims 7 and 11 both redefine “a housing,” which was previously defined in claim 1. This double inclusion is improper and confusing.
Appropriate correction is required.
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.
Berwanger
Claim(s) 1, 3-10 and 14-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Berwanger (U.S. Patent No. 6,016,892). Berwanger is directed to an automatic adjuster for a brake piston. See Abstract.
Claim 1: Berwanger discloses a vehicle brake system [Figs. 2a-2e, 4], wherein the vehicle brake system comprises: a frame (7), a brake pad (2/40), the brake pad being moveable relative to the frame between a braking position and a retracted position, a piston device (13), the piston device being moveable over an operational stroke to move the brake pad from the retracted position into the braking position [Figs. 2a, 2b, 2d, 2e], wherein the piston device comprises a first engagement surface (at 39), a retractor (19), the retractor being adapted to move the piston device over a return stroke, thereby moving the brake pad from the braking position into the retracted position, a stop (15), the stop being in engagement with the first engagement surface of the piston device at the end of the return stroke, the stop is arranged to prevent movement of the first engagement surface past the stop in the direction of the return stroke [see Figs. 2a, 2e], the stop is moveable by the piston device in the direction of the operational stroke of the piston device [see Figs. 2a-2e], and the piston device further comprises a second engagement surface (21) adapted to engage the stop at an end of the operational stroke [see Figs. 2b, 2d], and an intermediate element (11 and/or 17) moveably arranged into a housing (7 or 61) [see, e.g., Figs. 1, 4 (11 is movable within 7 or 61 via threads); see also Figs. 2a-2e (17 shifts left-right)], wherein the stop is mounted in the intermediate element, and wherein the intermediate element is cup-shaped and has a central opening and at least part of the piston device is accommodated in the central opening [see Figs. 2a-2e]. See Figs 1, 2a-2e, 4.
Claim 3: Berwanger discloses that the stop is moveable by the second engagement surface of the piston device in the direction of the operational stroke when the operational stroke is longer than the return stroke. See Fig. 2d.
Claim 4: Berwanger discloses that the first engagement surface of the piston device is spaced apart from the stop when the piston device is in an intermediate position in the return stroke, an intermediate position in the operational stroke, and at the end of the operational stroke. See Figs. 2b, 2c.
Claim 5: Berwanger discloses that the retractor is adapted to force the first engagement surface of the piston device against the stop with a pre-tensioning force and to maintain this pre-tensioning force while the piston device is at the end of the return stroke. See Figs. 2a-2e.
Claim 6: Berwanger discloses that the vehicle brake system further comprises a drive which is adapted to apply a drive force on the piston device in order to move the piston device over the operational stroke, and wherein the retractor is adapted to apply a retraction force onto the brake pad and/or on the piston device during the return stroke, and wherein the drive force is larger than the retraction force. See col. 2, line 62; Figs. 2a-2e.
Claim 7: Berwanger discloses that the stop is slidably mounted in a housing (7), wherein a static friction force is present between the stop and the housing, which static friction force is smaller than the drive force and larger than the retraction force. See Fig. 1; see 112 rejection above.
Claim 8: Berwanger discloses that the vehicle brake system further comprises a locking device (17) which is adapted to prevent movement of the stop in the direction of the return stroke. See Figs. 2a-2e; see also 112 rejection above.
Claim 9: Berwanger discloses that the locking device is or comprises one of the following: a wedge, a double louvre, a linear backstop, a one way freewheel clutch, a rod having one-directional self-locking thread, a flexible seal. See Figs. 2a-2e; see also 112 rejection above.
Claim 10: Berwanger discloses that the retractor is or comprises a spring, a hydraulic device, a pneumatic device, a magnetic device, an electric device and/or an electromagnetic device. See Figs. 2a-2e (spring).
Claim 11: Berwanger discloses that the piston device extends into a housing, and wherein the stop comprises a ring having a central annular opening, which ring is friction mounted inside the housing and onto an inner wall of the housing, wherein a part of the piston device extends through the annular opening of the ring, with the ring being arranged between the first engagement surface of the piston device and the second engagement surface of the piston device, wherein the ring comprises a first annular surface which is arranged to engage the first engagement surface of the piston device at the end of the return stroke and a second annular surface on the opposite side of the ring with regard the first annular surface, which second annular surface is arranged to engage the second engagement surface of the piston device at the end of the operational stroke when the operational stroke is longer than the return stroke. See Figs. 2a-2e; see also 112 rejection above.
Claim 12: Berwanger discloses that the retractor is arranged in the housing. See Figs. 2a-2e.
Claim 14: Berwanger discloses that the retractor is arranged between the piston device and the intermediate element. See Figs. 2a-2e.
Claim 15: Berwanger discloses that the vehicle brake system further comprises a rotatable wheel part (3), and wherein in the braking position the brake pad engages the rotatable wheel part. See Figs. 2a-2e.
Claim 16: Berwanger discloses a vehicle, which vehicle comprises: a wheel which is provided with an in-wheel motor, which in-wheel motor comprises a rotor (3), a vehicle brake system according to claim 1, wherein in the braking position the brake pad engages the rotor of the in-wheel motor. See col. 1, lines 1-20; Figs. 2a-2e.
Claim 17: Berwanger discloses a vehicle, which vehicle comprises: a wheel which is provided with a brake disk (2, 4), a vehicle brake system according to claim 1, wherein in the braking position the brake pad engages the brake disk. See col. 1, lines 1-20; Figs. 2a-2e.
Claim 18: the Berwanger vehicle brake system is to be used in a “wheeled vehicle,” which may include a “trailer.” This is an intended use, not a structural limitation of the claimed brake system.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 3-12 and 14-18 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL R SAHNI whose telephone number is (571)270-3838. The examiner can normally be reached M-F 7am-3pm PST.
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, Robert Siconolfi can be reached on 571-272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
VISHAL SAHNI
Primary Examiner
Art Unit 3657
/VISHAL R SAHNI/Primary Examiner, Art Unit 3616 April 29, 2026
Prosecution Insights