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 .
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5, 7-13, 15-16 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Choi (U.S. 2021/0016758) in view of Finkemeyer (U.S. 6,513,398) and Mauro et al. (U.S. 9,879,759).
Regarding claims 1 and 11, Choi discloses (figs. 1-5) An actuator for a vehicle brake (caliper, as shown), comprising:
a housing (400);
a first worm shaft (62) connected to a motor (60) and disposed within the housing (see fig. 2);
a first worm wheel (72) disposed within the housing, engaged with the first worm shaft, and rotated in conjunction with a rotation of the first worm shaft;
a second worm shaft (generally at 71/73) comprising:
a second worm shaft body (central shaft 71) disposed within the housing and connected to the first worm wheel, and
a plurality of second worm shaft gear teeth (e.g. right teeth of 73 in fig. 2) disposed on an outer circumference of the second worm shaft body in a way to be spaced apart from each other (spaced axially), the plurality of second worm shaft gear teeth comprising:
second worm shaft cylindrical gear teeth, each having a constant external diameter from the worm shaft central part to a second end of the second worm shaft body (as shown, the teeth are equal diameter); and
a single second worm wheel (220/222), wherein the single second worm wheel is engaged with the second worm shaft and configured to deliver electric power to a piston part (170) that pressurizes or releases a brake (pgh. 0067: “As the carrier sections 150 and 250 are rotated, the piston sections 170 and 270 are moved toward the brake pad 20 and press the brake pad 20.”)
Choi does not appear to disclose second worm shaft enveloping gear teeth from the worm shaft central part toward a first end. Rather, the worm shaft teeth are all cylindrical, and the enveloping teeth are on the worm gear.
Finkemeyer teaches (fig. 4) gear teeth of a worm wheel (15) that meshes with a worm shaft (14), where the gear teeth have an external diameter that is increased from a central part of the body (at 16a) toward one end (right end) and cylindrical toward a second end (left end). In other words, the gear teeth are “semi-globoid” (see col. 2 lines 22-24). While Finkemeyer discloses the semi-globoid tooth geometry on the worm wheel rather than the worm shaft, Mauro teaches providing globoid shaped teeth on either the worm shaft (fig. 1c), on the worm wheel (fig. 1b), or both (fig. 1d). In order to arrive at the claimed invention, the gear teeth would be semi-globoidal (as suggested by Finkemeyer) and additionally provided on the worm shaft (as suggested by Mauro).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided semi-globoidal teeth for mating between the worm shaft and the worm gear as suggested by Finkemeyer to increase the contact area of the meshing teeth, thus increasing torque capacity and reducing noise.
Further it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the semi-globoidal teeth on the worm shaft as suggested by Mauro as an obvious matter of engineering design choice. Mauro suggests that these constructions are known equivalent to one another, so one of ordinary skill in the art could select where to place the semi-globoidal teeth of Finkemeyer based on preference. Upon adding semi-globoidal teeth to the worm shaft, one of ordinary skill in the art arrives at predictable results of increasing contact surface area and increased torque capacity, and simultaneously arrives at the claimed invention. Upon placing semi-globoidal teeth on the worm shaft, the worm shaft enveloping teeth will have an external diameter that is increased from a worm shaft central part toward a first end, while the worm shaft cylindrical teeth will have a constant external diameter from the worm shaft central part to a second end, where the first and second ends oppose each other in a longitudinal axis of the second worm shaft body, and a portion of the second worm shaft including the enveloping teeth has a shape of a globoid worm shaft (which is the same as the shaft in general being “semi-globoidal”).
Regarding claim 2, Choi as modified teaches (figs. 1-5) at least one of the second worm shaft enveloping gear teeth is disposed on a first side on the second worm shaft body (one of left or right side, as in fig. 4), the first side approaches the second worm wheel in response to the second worm shaft being rotated in a direction in which the second worm shaft generates braking power (regardless of rotation direction, the teeth “approach” the second worm wheel in that they take up any gear tooth lash and come into contact with the second worm wheel).
Regarding claim 3, Choi as modified teaches (figs. 1-5) at least one of the second worm shaft cylindrical gear teeth is disposed on a second side on the second worm shaft body (whichever side the enveloping teeth are not on, as modified), the second side becomes distant from the second worm wheel in response to the second worm shaft being rotated in the direction in which the second worm shaft generates the braking power (regardless of rotation direction, the teeth “approach” the second worm wheel in that they take up any gear tooth lash and come into contact with the second worm wheel), and the first and second sides oppose each other on a basis of the worm shaft central part (as modified about line 16a of Finkemeyer).
Regarding claims 4 and 12, Choi as modified teaches (figs. 1-5) a bearing disposed within the housing and configured to support a rotation of the second worm shaft (see annotated figure below).
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Regarding claims 5 and 13, Choi as modified teaches (figs. 1-5) the at least one of the second worm shaft enveloping gear teeth is disposed closer to the first worm wheel than the at least one of the second worm shaft cylindrical gear teeth (Considering the teeth to the right of 72 in fig. 2: As modified, either the left or right half of these teeth are semi-globoidal. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the left half of the teeth the enveloping gear teeth as an obvious matter of engineering design choice. Since Finkemeyer discloses exactly half of the teeth are semi-globoidal, either the left half or the right half needs to have this construction, and these are the only two options, each of which have identical function. When selecting the left half of the gear teeth to be the enveloping gear teeth, one of ordinary skill in the art arrives at the claimed invention), and
the bearing is disposed between the first worm wheel and the at least one of the second worm shaft enveloping gear teeth (the bearing in the annotated figure is between the right teeth and the first worm wheel).
Regarding claim 7, Choi as modified teaches (figs. 1-5) in response to the second worm shaft being rotated in a direction in which the second worm shaft generates braking power, at least one of the second worm shaft enveloping gear teeth is disposed on a third side on the second worm shaft body, the third side is one in which the second worm shaft applies a force greater than a force applied to at least one of the second worm shaft cylindrical gear teeth (Considering the teeth to the right of 72 in fig. 2: As modified, either the left or right half of these teeth are semi-globoidal. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the left half of the teeth the enveloping gear teeth as an obvious matter of engineering design choice. Since Finkemeyer discloses exactly half of the teeth are semi-globoidal, either the left half or the right half needs to have this construction, and these are the only two options, each of which have identical function. When selecting the left half of the gear teeth to be the enveloping gear teeth, one of ordinary skill in the art arrives at the claimed invention. When selecting the left half of the gear teeth to be the enveloping gear teeth, more of these teeth are pressing on the second worm wheel and with a larger diameter, thus they are capable of applying a larger force. Additionally, the corresponding teeth of the second worm wheel are angled toward the enveloping gear teeth on that side, further amplifying the force).
Regarding claim 8, Choi as modified teaches (figs. 1-5) in response to the second worm shaft being rotated in a direction in which the second worm shaft releases the braking power, the at least one of the second worm shaft cylindrical gear teeth is disposed on a fourth side on the second worm shaft body, the fourth side is one in which the second worm shaft applies a force greater than a force applied to the at least one of the second worm shaft enveloping gear teeth, and the third and fourth sides oppose each other on a basis of the worm shaft central part (When selecting the left half of the gear teeth to be the enveloping gear teeth, and accordingly the right half are selected as the cylindrical teeth, more of these teeth are pressing on the second worm wheel in the opposite direction, thus they are capable of applying a larger force. Additionally, the corresponding teeth of the second worm wheel are angled toward the enveloping gear teeth on that side, further amplifying the force).
Regarding claims 9 and 15, Choi as modified teaches (figs. 1-5) the second worm wheel comprises: a second worm wheel body (221) rotatably installed in the housing; and a plurality of second worm wheel gear teeth (222) disposed along an outer circumference of the second worm wheel body in a way to be spaced apart from each other (in the circumferential direction), the second worm wheel gear teeth comprising: a second worm wheel enveloping gear tooth (Finkemeyer, fig. 4, e.g. right side of 16 relative to line 16a) comprising a second worm wheel inclined part having a protrusion height increased from a central part of the second worm wheel gear tooth toward a first end of the second worm wheel gear tooth (toward the right as shown), and a second worm wheel cylindrical gear tooth (left side relative to 16a) having a constant protrusion height from the central part to a second end of the second worm wheel gear tooth (toward the left as shown).
Regarding claims 10, Choi as modified teaches (figs. 1-5) the second end of the second worm wheel gear tooth is an end opposite the first end of the second worm wheel gear tooth (fig. 4 of Finkemeyer, left and right ends are opposite).
Regarding claims 16, Choi as modified teaches (figs. 1-5) an external diameter of an outermost second worm shaft enveloping gear tooth among the second worm shaft enveloping gear teeth is larger than an external diameter of an outermost second worm shaft cylindrical gear tooth among the second worm shaft cylindrical gear teeth (as modified, the teeth of the worm shaft are semi-globoidal, and carry the recited structure).
Regarding claim 18, Choi as modified teaches an entire cross-sectional shape of the second worm shaft gear teeth is a half double-headed drum shape (to the same extent that the instant shaft has the claimed shape, so too does the modified shaft of Choi, since Choi has been modified to include the globoidal teeth on half the shaft, resulting in a semi-globoidal shaft, which is deemed to be the same construction as “half double-headed drum shape”).
Claims 6 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Choi (U.S. 2021/0016758) in view of Finkemeyer (U.S. 6,513,398) and Mauro et al. (U.S. 9,879,759), and further in view of Shimizu et al. (U.S. 2003/0034196).
Regarding claims 6 and 14, Choi as modified teaches (figs. 1-5) the at least one of the second worm shaft enveloping gear teeth is disposed further from the first worm wheel than the at least one of the second worm shaft cylindrical gear teeth (Considering the teeth to the right of 72: As modified, either the left or right half of these teeth are semi-globoidal. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made the right half of the teeth the enveloping gear teeth as an obvious matter of engineering design choice. Since Finkemeyer discloses exactly half of the teeth are semi-globoidal, either the left half or the right half needs to have this construction, and these are the only two options, each of which have identical function. When selecting the right half of the gear teeth to be the enveloping gear teeth, one of ordinary skill in the art arrives at the claimed invention).
Choi does not appear to disclose the relative positioning of the enveloping gear teeth and bearing with respect to the first worm wheel. While element 71a of Choi could be a bearing that meets the claimed bearing, it is unclear and not discussed in Choi. Nevertheless, Shimizu teaches a worm shaft (10) supported by bearings (25) on both axial ends. In order to arrive at the claimed invention, element 71a at the rightmost end of the worm shaft of Choi would be a bearing as suggested by Shimizu. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the bearing at the end of the worm shaft to support the end of the shaft within the casing while minimizing friction, as well as preventing the shaft from flexing away from the mating gear under load.
Response to Arguments
Applicant's arguments filed 1/28/2026 have been fully considered but they are not persuasive.
Regarding argument (a) on pages 7-8, Applicant contends that Choi does not disclose “a portion of the second worm shaft including the second worm shaft enveloping gear teeth has a shape of a globoid worm shaft” of the independent claims, because the modification of Finkemeyer results in semi-globoidal teeth rather than globoidal teeth. It is noted that the claim does not require the second worm shaft (as a whole) having a shape of a globoidal worm shaft, because the claim recites that only “a portion of the second worm shaft” has this shape. Accordingly, only part of the shaft needs to be “globoidal”, namely the portion that has the enveloping teeth that have “an external diameter that is increased from a worm shaft central part of the second worm shaft body toward a first end of the second worm shaft body”. Applicant appears to be attempting to draw a distinction between “globoidal” and “semi-globoidal”, but this is not persuasive. When half of the shaft has a globoidal shape and half has a cylindrical shape, the shaft as a whole is said to be “semi-globoidal” while the portion of the shaft that is non-cylindrical can be said to be “globoidal”, so this is describing the same structure in two different ways. The second worm shaft of the present invention is technically semi-globoidal because all of the threads are not globoidal, while the half that are non-cylindrical can be considered “globoidal”. In the same manner, this is the construction of the modified shaft as appears in the rejection above.
Regarding argument (b) on pages 8-9, Applicant contends that the combination of references does not disclose a second worm shaft having both enveloping teeth and cylindrical teeth, because while Mauro discloses enveloping teeth can be placed on either the worm, wheel or both, Mauro does not disclose the enveloping teeth can be disposed on the shaft in combination with teeth having a constant external diameter. Mauro was not relied upon for this construction, as these are the teachings of Finkemeyer. When viewed in combination, the combination of references suggests to one of ordinary skill in the art that 1) the teeth can be provided semi-globoidally, and 2) such teeth can be provided on the worm shaft.
Regarding argument (c) on pages 9-10, Applicant contends that the “design choice” rationale of rearrangement of parts is not applicable to the pending application, because the proposed modification results in more than a mere rearrangement of parts and instead requires entirely different gear teeth. While it is agreed that providing different gear teeth does not constitute “rearrangement of parts”, this feature was not provided with this rationale. The teaching of providing the modified tooth geometry taught by Finkemeyer was at least reasoned from knowledge generally available to one of ordinary skill in the art, and established scientific principles. See the rejection above, where it was stated that this modification would have been obvious “to increase the contact area of the meshing teeth, thus increasing torque capacity and reducing noise.”
Regarding argument (d) on page 10, Applicant contends that Choi does not disclose a “single second worm wheel”, because “single” is defined to be only one and not one of many, and Choi discloses two second worm wheels rather than one. As mapped above, the component 220 is in fact a “single” component having a single piece, rather than a plurality of components. Therefore, the component 220 corresponds to a “single second worm wheel” as claimed, at least in this manner. Further, due to the drafting using the word “comprising”, the scope of the claim is open-ended and does not exclude additional, unrecited elements. See MPEP 2111.03: “The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004)”. Whether or not the device of Choi also includes other unclaimed worm wheels is not relevant so long as the worm wheel relied upon constitutes a ”single worm wheel”. See also Regeneron Pharm., Inc. v. Merus N.V., 864 F.3d 1343, 1352 (Fed. Cir. 2017). In the present instance, the worm wheel 220 meets this construction.
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.
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/DAVID R MORRIS/Primary Examiner, Art Unit 3616