DETAILED ACTION
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
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 1-6, 11-13, 15-18, 20, and 22-24 are alternately rejected under 35 U.S.C. 103 as being unpatentable over Schmeckenbecher et al. (DE102007056638, previously cited but not relied upon, with reference to translation) in view of Kubomura et al. (U.S. Patent 5,122,210) and Busskamp (DE102020201492, with reference to translation).
Claims 1 and 11: Schmeckenbecher et al. discloses a joining device (comprising 4, 4a, 5, 8 – e.g. Fig. 6) for joining components (specifically camshaft components, e.g. cams 1a) on a shaft (specifically a camshaft 1), comprising a joining device body (comprising 4, 8); wherein the joining device body includes fixed transverse walls (4, specifically left and right portions thereof as in Figs. 3-4 - fixed implied in that walls 4 are attached to base 8 and are not shown or described to be relatively movable) arranged axially spaced apart at a distance from one another relative to a shaft axis (e.g. Fig. 6), the fixed transverse walls having a respective opening (4a) of a plurality of openings for receiving the shaft/tube (evident in Fig. 4), wherein the fixed transverse walls respectively extend radially away from one another on opposite sides of the respective opening (left and right portions of the walls extend away from the central opening) and from opposite sides of the joining device body (e.g. the walls 4 of the overall body extend inward from opposite leftmost/rightmost sides of the walls). Please refer to the annotated Fig. 4 below for additional information regarding the interpretations within this rejection.
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It is further noted that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In this case, limitations referring specifically to joining camshaft components on a camshaft tube describe the intended use of the claimed invention and do not necessarily limit its structure.
To any extent that the wall geometry of Schmeckenbecher is determined not to read on that claimed, the examiner also submits that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have altered the shape of the base and/or walls accordingly since it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, Applicant has not disclosed any criticality for the claimed geometry.
Schmeckenbecher does not specify that the joining device body is composed of a material with a heat expansion coefficient that is lower than 10.0 μm/m° C, or that this is different than a material defining the plurality of openings. However, Kubomura et al. teaches that it is beneficial to construct an assembly jig (10) from a low-CTE material to ensure precision of the assembled product (column 4, lines 52-59). It thus would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have similarly constructed the body of the Schmeckenbecher device from a low-CTE material for the purpose of ensuring accuracy of the assemble camshaft, and as a matter of applying a known technique (use of low-CTE material) to a known device (a camshaft assembly device as that of Schmeckenbecher) ready for improvement to yield the predictable result of a more dimensionally stable assembly device (MPEP 2143 I. D.).
Kubomura et al. does not specify the low-CTE materials and thus is silent regarding the actual CTE thereof. However, Busskamp teaches that low-CTE iron-nickel alloy (Invar or 1.3912) and silicon nitride ceramic are useful low-CTE materials for fabricating dimensionally stable devices (paragraphs 23 and 54). Thus, it would have been obvious to one of ordinary skill to have used any of these materials in the Schmeckenbecher device for the purpose of making it dimensionally stable. It is noted that Invar and silicon nitride both have CTE well below 10.0 μm/m° C.
Claims 2-3 and 12-13: As cited above, Kubomura uses a low-CTE material, e.g. Invar or silicon nitride. The claimed CTE is presumed inherent as a material property of silicon nitride. Regarding Invar, the specific heat expansion coefficient is not listed, although the examiner notes that the CTE value for Invar will range generally around that claimed depending upon the specific alloy and application temperature. However, to the general goal of using a low-CTE material, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have selected an iron nickel alloy having a heat expansion coefficient specifically as claimed since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Claim 4 and 16: Referring to Schmeckenbecher, the joining device body is structured for thermally joining the components on the shaft/tube (e.g. paragraph 54).
Claim 5 and 17: The joining device body is structured for press-fitting the components on the shaft/tube (the device is used to push the shaft through the cams and would be capable of use in a press fitting operation, e.g. stop 5 is used to support the cam against the axial joining – paragraph 44).
Claims 6 and 20: The material with the heat expansion coefficient that is lower than 10.0 μm/m°C has the same axial extent as the respective opening of the plurality of openings in which the material is arranged (each of the walls 4 defines an opening having an axial extent, where if made by the low-CTE material, the material would have the same axial extent).
Claim 15: Schmeckenbecher does not disclose that the transverse walls have an axial extent of 30 mm. However, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modified the device of Schmeckenbecher to have had an axial extent of 30 mm since it has been held that “where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device” Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 SPQ 232 (1984). In the instant case, the device of Schmeckenbecher would not operate differently with the claimed axial extent the device would function appropriately having the claimed extent, noting this dimension might merely be dependent upon the scale of the camshaft being constructed and the requisite size of the device therefor. Further, it appears that applicant places no criticality on the claimed value (paragraph 26).
Claim 18: Referring to Schmeckenbecher, the camshaft components include at least one of a drive element and a cam (e.g. paragraph 47). Again, however, it is noted that the workpieces do not limit the scope of the device. See also MPEP 2115.
Claim 22: Referring to Schmeckenbecher, the joining device defines an interior (essentially opening 4a) between the opposite sides of the joining device (see annotated Fig. 4 above) for accommodating the camshaft and the joining camshaft components, and the opposite sides of the joining device body are arranged radially spaced apart from one another (radially being the left/right direction) on opposite sides (left/right) of the interior relative to the shaft axis, whereby the fixed transverse walls extend from the opposite sides of the joining device body (inward from the opposite sides) across the interior to the respective opening (Fig. 4).
Claim 23: The fixed transverse walls are composed of the material with the heat expansion coefficient that is lower than 10.0 μm/m°C (implied to the extent that the overall device is modified to be made from such material as discussed above).
Claim 24: Referring to Schmeckenbecher, the joining device defines an interior (essentially opening 4a) between the opposite sides of the joining device (see annotated Fig. 4 above) for accommodating the shaft and the joining camshaft components, and wherein the opposite sides of the joining device body are arranged radially spaced apart from one another (radially being the left/right direction) on opposite sides (left/right) of the interior relative to the shaft axis, whereby the fixed transverse walls extend from the opposite sides of the joining device body (inward from the opposite sides) across the interior to the respective opening (Fig. 4).
Response to Arguments
Applicant's arguments filed 7/8/2026 have been fully considered.
Applicant’s Affidavit is entirely an opinion argument regarding the examiner’s legal conclusion of obviousness based on Applicant’s own interpretations, and is essentially indistinguishable from a typical argument of counsel. Applicant has presented no secondary evidence to support any of the arguments. Referring to MPEP 716.01(c) III., for example, “[a]lthough factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. While an opinion as to a legal conclusion is not entitled to any weight, the underlying basis for the opinion may be persuasive” (bold added for emphasis).
The examiner refers to the annotated Fig. 4 of Schmeckenbecher for clarity regarding how the reference is interpreted against the claims. The interview of 9/8/2026 further provided clarification in this regard.
Applicant asserts that “the structural configuration of the joining device, specifically the fixed transverse walls arranged axially spaced apart and extending radially from opposite sides of the joining device body to provide a central opening, provides enhanced rigidity and support to the joining device for improved axial positioning”. However, Applicant provides no evidence in support of this conclusion in either the affidavit or the remarks, such that it amounts to arguments of counsel.
Kubomura is used to generally establish the use of low-CTE materials in assembly fixtures for the purpose of ensuring precision and is merely silent to the specific materials within this category. The examiner maintains that both Schmeckenbecher and Kubomura are in the art of assembly jigs and are thus analogous, and furthermore Kubomura is directed to solving a similar problem as Applicant by using low-CTE materials in such jigs.
Busskamp merely provides examples of known low-CTE materials used to fabricate dimensionally stable devices, which dovetails with the teachings of Kubomura. The examiner does not propose to apply the low-CTE materials to the workpiece of Schmeckenbecher.
Applicant argues that “[t]here is no motivation in Schmeckenbecher to use low-CTE materials because Schmeckenbecher's concern is phase positioning of cams within the housing 2, i.e., a cylinder head cover, not minimizing temperature induced dimensional variance on a shaft”. However, as noted above, Kubomura teaches the use of low-CTE materials in assembly fixtures for the purpose of ensuring precision. It is unclear why one of ordinary skill would not have been motivated to have enhanced the precision of a similar assembly fixture such as in Schmeckenbecher. Furthermore, the prior art can suggest different reasons to combine from Applicant’s (MPEP 2144 IV.).
The new claims and amendments are otherwise addressed in the rejection above.
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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, Sunil K. Singh can be reached on 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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