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 .
Drawings
The drawings were received on 11/19/2025. These drawings are acceptable.
Claim Rejections - 35 USC § 112
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 11-15 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.
Claim 11 recites the limitation "a gear set" in both lines 12 and 14. This is double inclusion. It is unclear whether the “a gear set” recited in line 14 is the same as that recited in line 12. Furthermore, claim 11 recites “the gear set” in lines 21 and 23-24. It is unclear whether the recitation of “the gear set” in line 21 refers to the “a gear set” recited in line 12 or the “a gear set” recited in line 14. Likewise, it is unclear whether the recitation of “the gear set” in lines 23-24 refers to the “a gear set” recited in line 12 or the “a gear set” recited in line 14. For the purpose of further examination on the merits, the term “a gear set” recited in line 14 will be understood to be able to encompass the gear set claimed in line 12 and to not require a distinct gear set different than that recited in line 12.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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)(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.
Claim(s) 11 and 13-14 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kim (US2023/0387749).
Kim discloses:
Re claim 11.
An actuator for an automotive power seat, comprising:
a motor (50) assembly including:
a BLDC motor (abstract; 50) comprising a rotor (30), a stator (40) assembly, and a motor shaft (shaft portion of worm 35) rotatably supporting the rotor;
a PCB module (including 51; see Fig. 2) having a through-hole (see large hole in 51 in Fig. 2) through which the motor shaft passes, the PCB module including a sensing sensor (para. [0031], [0104]) configured to detect a position of the rotor and a PCB (51) disposed in a direction perpendicular to the motor shaft; and
a second shaft bearing (36; para. [0074]) rotatably supporting the motor shaft;
a reduction-gear assembly (including housing 10 including 11 and 12; including gear set including 70, 73, 82, 35, and 72) coupled to the motor assembly at a side where the motor shaft extends, the reduction-gear assembly receiving a rotational force of the motor to perform speed reduction, the reduction-gear assembly comprising:
a reduction-gear housing (including 10 including 11 and 12) accommodating a gear set (including 70, 73, 82, 35, and 72) including reduction gears and receiving an extended portion of the motor shaft;
a gear set including at least a gear worm (73) coupled to one end of the motor shaft and a worm wheel (82) engaged with the gear worm; and
a bearing guide (see Fig. 1D - portion of 12 surrounding second shaft bearing 36) surrounding an outer circumferential surface of the second shaft bearing (36) and positioned inside the reduction-gear housing;
wherein the reduction-gear housing comprises:
a PCB-cover portion (11) covering the PCB exposed from the motor assembly and coupled to the motor assembly;
a gear-mounting portion (12) in which the gear set is accommodated; and
a shaft-receiving portion (11b) connecting (connecting via the motor shaft) the PCB-cover portion (11) and the gear-mounting portion (12) and receiving one end of the motor shaft on which the gear worm of the gear set is coupled,
wherein the reduction-gear housing (components 11 and 12 are joined together) is integrally formed (Note that the term “integrally form” does not require single-piece construction).
The limitation “wherein the reduction-gear housing is integrally formed” recited in claim 11 is a product-by-process claim. MPEP § 2113 states:
Even though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself. The patentability of a product
does not depend on its method of production. If the product in the product-by-process
claim is the same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process.” In re Thorpe, 777
F.2d 695
As set forth in MPEP § 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is formed, the burden is shifted to applicant to show an unobvious difference. See MPEP § 2113.
Re claim 13.
The actuator according to claim 11, wherein an outer diameter of the second shaft bearing is smaller than an inner diameter of the through-hole (see large hole in 51 in Figs. 1D and 2) of the PCB such that the second shaft bearing passes through the through-hole of the PCB during assembly.
The limitation “wherein an outer diameter of the second shaft bearing is smaller than an inner diameter of the through-hole of the PCB such that the second shaft bearing passes through the through-hole of the PCB during assembly” recited in claim 13 is a product-by-process claim. MPEP § 2113 states:
Even though product-by-process claims are limited by and defined by the process,
determination of patentability is based on the product itself. The patentability of a product
does not depend on its method of production. If the product in the product-by-process
claim is the same as or obvious from a product of the prior art, the claim is unpatentable
even though the prior product was made by a different process.” In re Thorpe, 777
F.2d 695
As set forth in MPEP § 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. Once a product appearing to be substantially the same or similar is formed, the burden is shifted to applicant to show an unobvious difference. See MPEP § 2113. The Examiner notes an outer diameter of the second shaft bearing (36) is smaller than an inner diameter of the through-hole (see large hole in 51 in Figs. 1D and 2) of the PCB such that it is capable of being passed through the through-hole of the PCB during assembly.
Re claim 14.
The actuator according to claim 11, wherein the reduction-gear housing (including 10 including 11 and 12) covers an opposite side surface of the PCB (51) and is coupled to the motor (50) assembly.
Allowable Subject Matter
Claims 12 and 15 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
In regards to claim 12, Kim discloses additional details, inter alia a stator (40) housing (41), a PCB cover (12) including a short cylindrical portion (14), a side-wall portion (outer walls of 12), and a first shaft bearing (64).
Kim does not disclose, teach, or suggest the additional combination of limitations of the PCB cover including a cylindrical well portion configured to receive a capacitor and a bearing cover coupled to the first shaft bearing and fitted to the stator housing, in combination with all other claim limitations.
In regards to claim 15, Kim does not disclose, teach, or suggest the additional combination of limitations of an end washer contacting one end of the motor shaft; an end rubber elastically supporting the end washer and positioned in a cylindrical hole of the reduction-gear housing; and a guide pipe having a through-hole through which the motor shaft passes, the guide pipe being coupled to the reduction-gear housing to prevent the end washer from being separated, wherein the shaft-receiving portion defines a space for accommodating the end washer, the end rubber, and the guide pipe, in combination with all other claim limitations. The Examiner notes that Blaettner (US5,237,231) suggests some aspects of the claim 15, inter alia an end rubber (167) and an end washer (164), but does not suggest or teach all of the limitations of claim 15.
Response to Arguments
Applicant’s arguments with respect to claim(s) 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. Claims 11-15 are new claims and have been addressed hereinabove.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 GREGORY T PRATHER whose telephone number is (571)270-5412. The examiner can normally be reached Monday-Thursday 9 AM - 5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at 571-270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GREGORY T PRATHER/
Examiner, Art Unit 3618
/MINNAH L SEOH/Supervisory Patent Examiner, Art Unit 3618