DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 4, and 10-12 are rejected under 35 U.S.C. 103 as being unpatentable over Kashiwai et al. US 20140318880 A1 in view of Igarashi et al. EP 0716010 A1 (page/line numbering used for foreign references below corresponds to the machine-translation preceding the original patent, as attached to the prior Office Action – note page numbers of the translation are marked as TP-1, TP-2, etc.).
Regarding independent claims 1 and 10, Kashiwai et al. discloses [a drive unit 40 for a vehicle,] (Fig. 1; Paragraph 0078) the drive unit comprising:
[a motor 38;] (Fig. 1; Paragraph 0077)
[a housing 45 mountable on the vehicle to hold the motor;] (Fig. 8; Paragraph 0078 & 0079) and
[a cover 42, 43, 44 to cover at least a portion of the housing;] (Annotated Fig. 11; Paragraph 0100; As shown in the annotation Fig. 11 below, Kashiwai et al. illustrates wherein the cover 42 covers at least a portion of the motor housing 45.) wherein
[the cover includes a bottom portion to cover at least a portion of a lower surface of the housing,] (Annotated Fig. 11; As shown in the annotation Fig. 11 below, Kashiwai et al. illustrates the cover 42, 43, 44 with a bottom portion that covers a bottom surface of the motor housing 45.) and [a left side wall extending from the bottom portion to cover at least a portion of a left side of the housing in a left-right direction of the vehicle;] (Annotated Fig. 11; As shown in the annotation Fig. 11 below, Kashiwai et al. illustrates a left side wall 44 extending from the bottom portion to cover at least a portion of a left side of the housing in a left-right direction of the vehicle.)
the cover includes [a first hole 96] (Fig. 11; Paragraph 0100; Kashiwai et al. discloses a drainage hole 96 that is positioned on the bottom portion of the cover 42.)
PNG
media_image1.png
914
1317
media_image1.png
Greyscale
Annotated Fig. 11 of Kashiwai et al.
Kashiwai et al. does not disclose the first hole located in at least one of (a) a location on the bottom portion to the left of a center of the bottom portion in the left-right direction, or (b) the left side wall.
Igarashi et al. teaches [a location on the bottom portion to the left of a center of the bottom portion in the left-right direction, or (b) the left side wall.] (Fig. 4; Page 4, lines 27-31; Igarashi et al. discloses a drain hole 110 that is positioned at the lowermost position of the motor case. This teaching makes it clear that the specific left-right placement is not critical, so long as it is positioned at the lowest point for drainage. Thus, Igarashi provides explicit support that the drain hole (of Kashiwai et al.) may be positioned at any location along the lowermost portion of the cover, including to the left of the center of the bottom portion, as claimed. As shown in the second annotation of Fig. 11 from Kashiwai et al. below, the drain hole 96 is moved to the left side of the bottom portion while being maintained at the lowermost position, as taught by Igarashi, which satisfies the limitation of the first hole being located to the left of a center of the bottom portion in the left-right direction.)
PNG
media_image2.png
365
827
media_image2.png
Greyscale
Second Annotation of Fig. 11 of Kashiwai et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to alternatively use the drain hole location of Igarashi et al. with the drive unit of Kashiwai with a reasonable expectation of success because it would allow for effective drainage while maintaining the hole at the lowermost position of the cover, thus ensuring proper fluid removal without introducing any unexpected results.
Kashiwai et al., as modified above, does not explicitly teach wherein in a cross section represented by a plane extending in the left-right direction and extending through the first hole, when the vehicle with the housing mounted thereon tilts to the left from an upright position by 5°, at least a portion of an interior edge of the cover at the first hole is at a lowest location on an inner surface of the cover in a direction of gravity. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Kashiwai et al. to make the drainage hole placement within 5 degrees, so as to achieve an optimal liquid drainage performance, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. See, In re Aller, 105 USPQ 233. Moreover, Applicant should note that nothing of record, nor known in the art, suggests that using the specific claimed range or value yields any previously unexpected results. (Paragraph 0086 of the current application being examined states that “at least a portion of the interior edge of the first hole may be at the lowest location on the inner surface of the cover at least when the vehicle is inclined from the upright position by about 3° to about 10°”. The specification’s disclosure of two conflicting angles creates ambiguity and does not clearly distinguish the claimed invention.).
Regarding claim 4, Kashiwai et al., as modified, already discloses all of the claimed limitations, including [wherein
the cover 42 includes a right-side wall extending from the bottom portion to cover at least a portion of a right side of the housing 45 in the left-right direction;] (Fig. 11; As shown in Fig. 4, Kashiwai et al. illustrates the cover 42 including a right-side wall extending from the bottom portion to cover at least a portion of a left side of the housing in a left-right direction of the vehicle.)
Kashiwai et al., as modified above, does not explicitly teach a second hole. However, according to MPEP 2144.04 (VI) (B) (In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)), the mere duplication of known elements does not confer patentability unless it produces a new and unexpected result. In this case, Kashiwai et al. already discloses a first hole. The extension of the configuration to include a second hole would have been an obvious design choice for one of ordinary skill in the art, as it simply replicates an existing arrangement with introducing an unexpected benefit. Therefore, it would have been obvious to extend the cover configuration of Kashiwai et al., as modified, to add an additional hole to achieve improved drainage, allowing fluid to exit from either side based on vehicle tilt without introducing an unexpected result, as it simply duplicates the function of the first hole.
Additionally, Kashiwai et al., as modified above, does not explicitly teach the cover including a second hole located in at least one of (a) a location on the bottom portion to the right of a center of the bottom portion in the left-right direction, or (b) the right-side wall. However, according to MPEP 2144.04 (VI)(C) (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950)), the mere rearrangement of parts does not confer patentability unless it produces a new and unexpected result. In this case, Kashiwai et al. already discloses a hole in the bottom portion. The modification to move the hole to the right of the center would have been an obvious design choice for one of ordinary skill in the art, as it simply replicates the function of the existing hole without introducing any new or unexpected benefits.
Kashiwai et al., as modified above, also does not explicitly teach wherein when the vehicle with the housing mounted thereon tilts to the right from an upright position by 5°, at least a portion of an interior edge of the cover at the first hole is at a lowest location on an inner surface of the cover in a direction of gravity. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified Kashiwai et al. to make the drainage hole placement within 5 degrees, so as to achieve an optimal liquid drainage performance, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. See, In re Aller, 105 USPQ 233. Moreover, Applicant should note that nothing of record, nor known in the art, suggests that using the specific claimed range or value yields any previously unexpected results. (Paragraph 0086 of the current application being examined states that “at least a portion of the interior edge of the first hole may be at the lowest location on the inner surface of the cover at least when the vehicle is inclined from the upright position by about 3° to about 10°”. The specification’s disclosure of two conflicting angles creates ambiguity and does not clearly distinguish the claimed invention.).
Regarding claim 11, Kashiwai et al., as modified, discloses all of the claimed limitations above, including [wherein, when the vehicle with the housing 45 mounted thereon is in the upright position, a lowermost point of the interior edge of the cover 42 at the first hole 96 is located lower than the housing.] (Fig. 11 of Kashiwai et al.; As shown in Fig. 11; Kashiwai et al. illustrates the lowermost point of the interior edge of the cover 42 at the first hole 96 being located lower than the housing 45.)
Regarding claim 12, Kashiwai et al., as modified, discloses all of the claimed limitations above, including [wherein the housing is located between the bottom portion of the cover and the motor, and between the left side wall of the cover and the motor.] (Fig. 3 and 11; As shown in Fig. 11, Kashiwai et al. illustrates wherein the housing 45 is located between the bottom portion of the cover and the motor 38, and between the left side wall of the cover and the motor.)
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Kashiwai et al. US 20140318880 A1 in view of Igarashi et al. EP 0716010 A1 and further in view of Kuramoto et al. JP 2022121335 A. (page/line numbering used for foreign references below corresponds to the machine-translation preceding the original patent, as attached to the prior Office Action – note page numbers of the translation are marked as TP-1, TP-2, etc.)
Regarding claim 2, Kashiwai et al., as modified, does not disclose a rib on the bottom portion of the cover to extend upward from the inner surface.
Kuramoto et al. teaches [a rib 49 on the bottom portion of the cover to extend upward from the inner surface.] (Fig. 14; Page 11, lines 18-21; Kuramoto et al. discloses that the ribs extend from the inner surface of an inner housing structure 47. Additionally, as shown in Fig. 14, Kuramoto et al. illustrates the ribs extending upwards from the inner surface.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to additionally use the rib structure of Kuramoto et al. with the cover structure of Kashiwai et al., as modified, with a reasonable expectation of success because it would allow for improved structural reinforcement and guided drainage within the housing, ensuring effective removal of fluid and preventing accumulation that could lead to mechanical inefficiencies or corrosion. (Col. 5, lines 36-38 of Kashiwai et al.).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Kashiwai et al. US 20140318880 A1 in view of Igarashi et al. EP 0716010 A1 and further in view of Hideki et al. CN 104066644 B. (page/line numbering used for foreign references below corresponds to the machine-translation preceding the original patent, as attached to the prior Office Action – note page numbers of the translation are marked as TP-1, TP-2, etc.)
Regarding claim 3, Kashiwai et al., as modified, discloses [a first hole 96.] (Fig. 11 of Kashiwai et al.; Paragraph 0100 of Kashiwai et al; Kashiwai et al. discloses a drainage hole 96 that is positioned at the lower portion of the cover 42.)
Kashiwai et al. does not disclose wherein the first hole is provided in the left side wall; and as viewed from the left in the left-right direction, at least a portion of the first hole is located below the housing and does not overlap the housing.
Hideki et al. teaches wherein
[the first hole is provided in the left side wall;] (Fig. 9; Page 14, lines 35-36) and
[as viewed from the left in the left-right direction, at least a portion of the first hole is located below the housing and does not overlap the housing.] (Fig. 11; As shown in Fig. 11, Hideki illustrates a portion of the drain hole being located below the housing. Additionally, the hole overlaps a portion of the motor cover 43 instead of the housing 40.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to alternatively use the drainage configuration of Hideki et al. with the cover structure of Kashiwai et al., as modified, with a reasonable expectation of success because it would allow for efficient fluid drainage from the left side wall, preventing fluid accumulation and improving overall durability of the housing. (Col. 5, lines 36-38 of Kashiwai et al.).
Claim 7-9 is rejected under 35 U.S.C. 103 as being unpatentable over Kashiwai et al. US 20140318880 A1 in view of Igarashi et al. EP 0716010 A1 and further in view Kim et al. US 20150148173 A1. (page/line numbering used for foreign references below corresponds to the machine-translation preceding the original patent, as attached to the prior Office Action – note page numbers of the translation are marked as TP-1, TP-2, etc.)
Regarding claim 7, Kashiwai et al., as modified, further teaches [a first hole.] (Fig. 11 of Kashiwai et al.; Paragraph 0100 of Kashiwai et al; Kashiwai et al. discloses a drainage hole 96 that is positioned at the lower portion of the cover 42.)
Kashiwai et al. does not disclose when the vehicle with the housing mounted thereon is in the upright position, the interior edge of the cover at the first hole is inclined toward the left in the left-right direction.
Kim et al. teaches [when the vehicle with the housing mounted thereon is in the upright position, the interior surface of the cover is inclined toward the left in the left-right direction.] (Fig. 6; As shown in Fig. 6, Kim et al. illustrates the interior surface of the cover 530 being inclined toward the left in the left-right direction, when the bicycle is in an upright position.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to alternatively use the inclined interior surface of the cover of Kim et al. with the first hole configuration of Kashiwai et al., as modified, with a reasonable expectation of success because this modification would allow for proper alignment and functionality of the hole with the inclined surface, ensuring effective operation of the cover in the upright position while maintaining structural integrity and intended design performance.
Regarding claims 8 and 9, Kashiwai et al., as modified, already discloses all of the claimed limitations including [wherein the left side wall extends from the interior edge of the cover at the first hole upwardly and outwardly in the left-right direction] (Fig. 6; As shown in the annotation Fig. 6 below, Kim et al. illustrates the left side wall extending from the interior edge of the first hole upwardly and outwardly in the left-right direction before it reaches a centerline.) and [upwardly and inwardly in the left-right direction.] (Fig. 6; As shown in the annotation of Fig. 6 below, Kim et al. illustrates the left side wall extending from the interior edge of the first hole upwardly and inwardly in the left-right direction after it reaches a centerline.)
PNG
media_image3.png
624
561
media_image3.png
Greyscale
Annotated Fig. 6 of Kim et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to alternatively use the left side wall configuration of Kim et al. with the motor cover of Kashiwai et al., as modified, with a reasonable expectation of success because it would allow for improved structural reinforcement and efficient fluid drainage along the side wall, ensuring stability and functionality of the cover while optimizing airflow and protection for the housing.
Allowable Subject Matter
Claim 5 and 6 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
- Claim 5 contains the limitation wherein the first hole is provided in the left side wall; the second hole is provided in the right-side wall; and as viewed in the left-right direction, at least a portion of the first hole overlaps at least a portion of the second hole. The closest prior art, Hideki et al. CN 104066644 B discloses a first hole being provided on the left side wall, but does not disclose a second hole being provided on the right-side wall; and as viewed in the left-right direction, at least a portion of the first hole overlapping with at least a portion of the second hole.
- Claims 6 contains the limitation wherein an edge of the first hole as viewed in the left-right direction includes a line extending obliquely downward from a front toward a rear. The closest prior art, Igarashi et al. EP 0716010 A1 discloses an edge of the first hole, but does not disclose the edge including a line extending obliquely downward from a front toward a rear.
Response to Arguments
Applicant's arguments, see Pages 2-5 of Remarks, filed 12/10/2025 have been fully considered but they are not persuasive.
Applicant argues (Page 2 of remarks) that reference character 45 in Kashiwai refers merely to a “space” and therefore does not correspond to the claimed housing that holds the motor. This argument is not persuasive. Kashiwai discloses a case main body 42 and a motor cover 43 that together define an enclosure that houses and protects the motor 38. The drain hole 96 is formed in the lower portion of the case main body and the motor cover, which are structural components enclosing the motor. Regardless of whether reference numeral 45 is labeled as a “space”, the structural members 42 and 43 clearly form a housing that holds the motor. Therefore, Kashiwai teaches a housing mountable to the vehicle that holds the motor, as claimed. Additionally, Kashiwai discloses outer cover structures (42-44) that cover at least a portion of the housing. Thus, the rejection properly maps the claimed housing and cover elements to Kashiwa’s disclosed structure.
Applicant argues (Page 3 of Remarks) that Igarashi teaches a drain hole only at a single, central rearward point and does not suggest placement elsewhere. This argument is not persuasive. Igarashi teaches that the drain hole 110 is positioned at the lowermost portion of the motor case to ensure drainage. The teaching emphasizes functional placement at the lowest point for drainage—not a strict requirement that the hole must be centered. The principle conveyed is that effective drainage occurs when the hole is positioned at the lowermost location of the structure. Applying this teaching to Kashiwai, the drain hole 96 may be repositioned along the lowermost portion of the cover, including to the left of the center, provided it remains at the lowest point of the cover in the intended operating orientation. Such placement remains consistent with Igarashi’s drainage principle.
Applicant argues (Page 3 of Remarks) that moving the drain hole of Kashiwai to the left constitutes improper hindsight. This argument is not persuasive. The modification is based on Igarashi’s explicit teaching that drain holes are located at the lowermost portion for drainage effectiveness. The relocation is not derived from Applicant’s disclosure but from applying a known design principle from Igarashi to the similar structure of Kashiwai. The combination merely applies a known drainage positioning technique to a comparable drive unit system.
Applicant argues (Page 4 of Remarks) that Igarashi does not teach positioning within 5 degrees or suggest similar drainage performance if the hole were moved. The rejection does not rely on Igarashi teaching a precise 5-degree range. Rather, the combination teaches positioning the drain hole at the lowermost point of the cover structure. When the modified hole in Kashiwai is positioned to the left at the lowermost portion, it inherently satisfies the claimed functional relationship when the vehicle tilts left, as the hole would be located at the lowest gravitational position under such tilt.
Applicant argues (Page 4 of Remarks) that the prior art fails to teach or suggest the limitation that “when the vehicle … tilts to the left from an interior edge of the cover at the first hole is at a lowest location,” and asserts that even slight lateral movement would remove the hole from the lowermost point. This argument is not persuasive. Paragraph [0086] of the applicant’s own specification states that “at least a portion of the interior edge of the first hole may be at the lowest location … when the vehicle is inclined from the upright position by about 3 degrees to 101 degrees.” Thus, Applicant’s disclosure makes clear that the drainage condition is not limited to precisely 5 degrees, but rather occurs over a range of tilt angles. Applicant has provided no evidence that exactly 5 degrees produces a new or unexpected result relative to other tilt angles within the disclosed range. In absence of evidence of criticality or unexpected results, selection of a specific value within a disclosed range constitutes routine optimization. Further, the rejection does not rely on Igarashi teaching an exact numerical tilt value. Rather, Igarashi teaches positioning a drain hole at the lowermost portion of the structure to achieve effective drainage. When the drain hole of Kashiwai is positioned at the lowermost portion consistent with Igarashi’s teaching, the claimed functional relationship under a leftward tilt inherently results.
Conclusion
THIS ACTION IS MADE FINAL. 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 Mohamed Medani whose telephone number is (703)756-1917. The examiner can normally be reached Monday - Friday, 8:30 am - 5:30 pm.
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, Valentin Neacsu can be reached on (571) 272-6265. 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.
/Mohamed M Medani/Examiner, Art Unit 3611
/VALENTIN NEACSU/Supervisory Patent Examiner, Art Unit 3611