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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s).
See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4, 6-14 and 16-22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 10, 12-14 and 25-31 of U.S. Patent No. US 11,273,894 B2 (‘894).
Although the claims at issue are not identical, they are not patentably distinct from each other because all limitations of the instant claims are encompassed in the claims of the ‘894 Patent.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 9-11 and 14-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mizutani et al. (US 10,696,368 B2)
Mizutani et al. show an electric actuator for a marine steering system (see Fig 5), the electric actuator comprising: a housing [67]; an output shaft [42]; a screw assembly [64, 65, 66] coupled to the output shaft; and a rotor [69], wherein the screw assembly is separately coupled to the rotor and the output shaft (see col. 9, lines 34-40). A motor [62] is configured to rotate the rotor, wherein rotation of the rotor causes the output shaft to translate axially relative to the housing.
Re claim 9, the rotor has an axial bore which engages with the screw assembly.
Re claim 10, the screw assembly comprises a drive screw [64], the drive screw coupled to the output shaft (see col. 9, lines 34-40).
Re claim 11, the screw assembly is a roller screw assembly comprising a plurality of rollers [65] and a central screw [64] received by the rollers, the rollers being rotatable about the central screw and the central screw coupled to the output shaft, wherein the axial bore engages with the rollers of the roller screw assembly.
Re claim 14, a rotation of the rotor causes the screw assembly to translate axially relative to the rotor.
Re claim 15, the screw assembly is axially stationary relative to the housing.
Re claim 16, the screw assembly engages the rotor directly (see col. 9, lines 34-40).
Re claim 17, the screw assembly engages the output shaft directly).
Re claim 18, the motor is concentric to the screw assembly.
Re claim 19, the motor includes a stator [62a] and the rotor [62b]
Re claim 20, the motor includes a stator [62a] and a motor shaft [62b], the motor is configured to rotate the motor shaft, and the motor shaft is rotationally coupled to the rotor [69] such that rotation of the motor shaft applies a torque to the rotor to cause rotation of the rotor.
Re claim 21, the electric actuator of claim 1 is coupled to a propulsion unit, wherein the output shaft includes a coupling portion [21, 25]; and a tiller [50] coupled via intermediate structures to the coupling portion.
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 1-8, 12-13, 15-17 and 19-22 are rejected under 35 U.S.C. 103 as being unpatentable over Ooshita et al. (US 8,419,488 B2)
Ooshita et al. show an electric actuator for a marine steering system (Fig 9 and Fig 10), the electric actuator comprising: a housing [51]; an electric motor [55] having a motor rotor [56]; a screw assembly [54], and an elongated member [70] that is broadly considered to be an output shaft, wherein the screw assembly is coupled to the output shaft. As seen in Fig 9, a bolt/spindle (unnumbered) extends through the motor rotor and is coupled to the screw assembly.
Further, Fig 9 appears to show that the bolt/spindle is rotatably supported by two rotary bearings (also unnumbered) located on opposing sides of the motor rotor. Although not expressly described in the specification, it would have been obvious to a person with ordinary skill in the art before the effective filing date of the invention to provide the marine steering system with rotary bearings which could rotatably support the bolt/spindle, as implied in Fig 9. Having such an arrangement would have provided a simple yet efficient mechanism to rotate the screw assembly. With such an arrangement in place, the rotatable bolt/spindle is broadly considered to be a rotor that is configured to be rotated by the motor, wherein rotation of the rotor causes the output shaft to translate axially relative to the housing.
Re claim 2, the output shaft is fully received within the housing.
Re claim 3, the output shaft includes a notch that is broadly considered to be a coupling portion, wherein the coupling portion is fully received within the housing and is capable of being coupled to a tiller [71] of a propulsion unit.
Re claim 4, the coupling portion is between first and second “lateral” ends of the output shaft.
Re claim 5, the coupling portion is located at an “upper” end of the output shaft.
Re claim 6, the electric actuator of claim 3 and the tiller [71], wherein the tiller is coupled to the coupling portion.
Re claim 7, the tiller has a tiller axis and is coupled to the coupling portion such that a line of action of the output shaft is in the same plane as the tiller axis throughout the entire steering range.
Re claim 8, the tiller has a tiller axis and is coupled to the coupling portion such that an axis of the output shaft intersects the tiller axis through the entire steering range.
Re claim 12, the output shaft has an axial bore which engages with the screw assembly.
Re claim 13, the screw assembly comprises a plurality of balls (see col. 5, 38-45). Although such balls are spherical rollers and not elongated spindle-shaped structures, they are broadly considered to be rollers of the screw assembly, as set forth in the claim. Such rollers are rotatable about the central screw portion of the screw assembly that is coupled to the rotor, wherein the axial bore engages with the rollers of the roller screw assembly.
Re claim 15, the screw assembly is axially stationary relative to the housing.
Re claim 16, the screw assembly engages the rotor directly.
Re claim 17, the screw assembly engages the output shaft directly.
Re claim 19, although Fig 9 shows the electric motor as having a motor rotor, it fails to expressly disclose a stator. However, it is noted that all electric motors require a stator to create a magnetic field that converts electrical energy into a rotational motion of the rotor. Therefore, it would have been obvious to a person with ordinary skill in the art before the effective filing date of the invention to provide the electric motor of Ooshita et al. with a stator, which would have allowed a rotation of the rotor.
Re claim 20, the rotor of the electric motor is considered to be a motor shaft, wherein the motor shaft is rotationally coupled to the rotor such that rotation of the motor shaft applies a torque to the rotor to cause rotation of the rotor.
Re claim 21, the electric actuator of claim 1 is coupled to a propulsion unit, wherein the output shaft includes a notch that is broadly considered to be a coupling portion; and wherein a tiller [71] coupled to the coupling portion.
Re claim 22, the coupling portion is fully received within the housing.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Bourgoine et al. (US 8978497) and Hill et al. each discloses (US 4947070) an electric actuator comprising: a screw assembly coupled to an output shaft
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AJAY VASUDEVA whose telephone number is (571)272-6689. The examiner can normally be reached 6:00 am - 3:00 pm.
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/AJAY VASUDEVA/Primary Examiner, Art Unit 3615