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 .
Amendment
Acknowledgement is made of Amendment filed on January 20, 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4, 15-18, and 21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claims 4, 15, and 21, the feature of the circumferential groove extending “circumferentially around the shaft end piece” renders the claim indefinite since the drawings do not sufficiently disclose this feature. While figures 5-7 show the circumferential groove 13 on a circumferential surface of the shaft end piece 5, the drawings however do not specifically illustrate the circumferential groove 13 extending circumferentially around the shaft end piece 5 (i.e. circumferential groove 13 is only shown in a cross section along a plane that is parallel to the shaft axis 15 as shown in figures 5-7 which does not sufficiently show this feature).
Claims 16-18 are also rejected under 35 USC 112 for their dependency upon aforementioned claim 15.
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.
Claim(s) 1-3, 7-10, 12, 13, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murakami (Japanese Patent Document No.: JP 2020028186 A) in view of Loos et al. (US Patent Application Pub. No.: US 2022/0131441 A1).
For claim 1, Murakami discloses the claimed invention comprising: a hollow shaft (reference numeral 22, see figure 1); a shaft end piece (reference numeral 38) having a joining region (reference numeral 42, see figure 1), the shaft end piece (reference numeral 38) arranged in a longitudinal end side of the hollow shaft (reference numeral 22, see figure 1); a channel (reference numeral 43) for cooling medium conduction (see figure 1), the channel connecting an interior of the hollow shaft (i.e. interior of shaft 22) with an environment (i.e. outside of shaft 22, figure 1); wherein the channel includes (i) an opening (i.e. opening in shaft 22 that partially forms channel 43, see figure 1, also see figure 5) arranged in the hollow shaft and (ii) a channel section (i.e. opening portion in shaft end piece 38 that partially forms channel 43, see figure 1) communicatingly connected with the opening (see figures 1, 5) in the joining region of the shaft end piece (reference numeral 42, see figures 1, 5). Murakami however does not specifically disclose at least a portion of the channel section being defined by and radially between the hollow shaft and the joining region of the shaft end piece.
Loos et al. disclose a portion of the channel section (reference numeral 40, figure 2) being defined by and radially between the hollow shaft (i.e. shaft 20, 24, see figures 2, 3) and the joining region (reference numeral 34, figure 2) of the shaft end piece (reference numeral 22, see figures 2, 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have a portion of the channel section being defined by and radially between the hollow shaft and the joining region of the shaft end piece as disclosed by Loos et al. for the channel section of Murakami for predictably providing desirable configuration for facilitating the cooling function in the device.
For claim 2, Murakami discloses the opening (i.e. opening in shaft 22 that partially forms channel 43, see figure 1, also see figure 5) arranged in the hollow shaft (reference numeral 22) being a radial bore (see figure 1).
For claim 3, Murakami in view of Loos et al. disclose the claimed invention except for the channel section being formed as a longitudinal groove. Loos et al. further disclose a longitudinal groove (reference numeral 40, figures 2, 6) for a shaft end piece (reference numeral 50, figures 2, 6), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the longitudinal groove as disclosed by Loos et al. for the channel section of Murakami in view of Loos et al. for predictably providing desirable configuration for facilitating the cooling function in the device.
For claim 7, Murakami discloses the joining region of the shaft end piece (reference numeral 18, 38, see figure 1) being at least one of pressed, glued, soldered, thermally joined, and welded in the hollow shaft (i.e. press fitted, see English translation of Murakami, Description, paragraph [0037]).
For claim 8, Murakami discloses the shaft end piece including an output element (reference numeral 18B, see figures 1, 3).
For claim 9, Murakami discloses the output element (reference numeral 18B) including at least one of an external toothing and an internal toothing (i.e. toothing shown on inner circumference of output 18B in figures 1, 3).
For claim 10, Murakami discloses a liquid cooled electric motor (see English translation of Murakami, Description, paragraph [0010, 0033]), i.e. a liquid-cooled electric motor, comprising a built rotor shaft according to claim 1.
For claim 12, Murakami discloses the claimed invention comprising: a hollow shaft (reference numeral 22, see figure 1) including an interior and a radial opening (i.e. opening in shaft 22 that partially forms channel 43, see figure 1); a shaft end piece (reference numeral 38) having a joining region (reference numeral 42, see figure 1) disposed in the interior of the hollow shaft (see figure 1); a channel (reference numeral 43) through which a cooling medium is conductible (see figure 1), the channel (reference numeral 43) connecting the interior of the hollow shaft (i.e. interior of shaft 22) with an environment (i.e. outside of shaft 22, figure 1); and Murakami also discloses a channel section (i.e. section of channel 43) communicatingly connected with the opening of the hollow shaft (reference numeral 22) and the interior of the hollow shaft (see figure 1); wherein the channel (reference numeral 43) is defined by the channel section and the opening of the hollow shaft (see figure 1). Murakami however does not specifically disclose the channel section defined by and between the hollow shaft and the joining region of the shaft end piece.
Loos et al. disclose a portion of the channel section (reference numeral 40, figure 2) being defined by and between the hollow shaft (i.e. shaft 20, 24, see figures 2, 3) and the joining region (reference numeral 34, figure 2) of the shaft end piece (reference numeral 22, see figures 2, 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the channel section being defined by and between the hollow shaft and the joining region of the shaft end piece as disclosed by Loos et al. for the channel section of Murakami for predictably providing desirable configuration for facilitating the cooling function in the device.
For claim 13, Murakami in view of Loos et al. disclose the claimed invention except for the joining region of the shaft end piece including a longitudinal groove that at least partially defines the channel section. Loos et al. further disclose a longitudinal groove (reference numeral 40, figures 2, 6) for a shaft end piece (reference numeral 50, figures 2, 6), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the longitudinal groove as disclosed by Loos et al. for the channel section of Murakami in view of Loos et al. for predictably providing desirable configuration for facilitating the cooling function in the device.
For claim 19, Murakami discloses the shaft end piece further including an output element (reference numeral 18B, see figures 1, 3) that projects from a longitudinal end of the hollow shaft (reference numeral 22) and that is disposed at least partially outside of the interior of the hollow shaft (see figures 1, 3).
Claim(s) 11 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Murakami in view of Loos et al. as applied to claims 1 and 12 above, and further in view of Weinmeister et al. (US Patent Application Pub. No.: US 2019/0199152 A1).
For claim 11, Murakami in view of Loos et al. disclose the claimed invention except for the channel section being formed as a circumferential flat. Having a flat surface on a circumferential surface is a known skill as exhibited by Weinmeister et al. (reference numeral 40, see figure 4d), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the flat surface as disclosed by Weinmeister et al. for the circumferential surface of Murakami in view of Loos et al. for predictably providing desirable configuration for facilitating the cooling function in the device.
For claim 14, Murakami in view of Loos et al. disclose the claimed invention except for a circumferential surface of the joining region of the shaft end piece including a flat surface region that at least partially defines the channel section. Having a flat surface on a circumferential surface is a known skill as exhibited by Weinmeister et al. (reference numeral 40, see figure 4d), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the flat surface as disclosed by Weinmeister et al. for the circumferential surface of the joining region of Murakami in view of Loos et al. for predictably providing desirable configuration for facilitating the cooling function in the device.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 6 is also objected to for its dependency upon aforementioned claim 5.
The following is a statement of reasons for the indication of allowable subject matter: While the prior art discloses some of the invention as explained above in the present action, the prior art of record however does not sufficiently disclose the combination of features including an additional channel section defined by and extending through the joining region of the shaft end piece, wherein: the channel is defined by the channel section, the additional channel section, and the opening of the hollow shaft; the joining region of the shaft end piece includes a circumferential groove which at least partially defines the channel section and is communicatingly connected with the opening in the hollow shaft; and the additional channel section extends inclined relative to a shaft axis and connects the circumferential groove with the interior of the hollow shaft as recited in claim 5.
Claim 6 is dependent upon claim 5.
Response to Arguments
Applicant's arguments filed 1/20/26 have been fully considered but they are not persuasive. In response to the assertion that the modified second oil hole 43 would achieve “the same function of the claimed longitudinal groove in the applicant's invention” shows that the Office Action improperly relied on the disclosure of the instant application and is evidence of impermissible hindsight, this was not persuasive since the reasoning for having the channel section 40 in figure 2 in Loos et al. is for cooling the rotor based on the disclosure of Loos et al., therefore this would not be impermissible hindsight since the reasoning (i.e. cooling the rotor) was in the disclosure of Loos et al. In other words, the motivation for including the features of Loos et al. was provided in the disclosure of Loos et al. (i.e. cooling the rotor), and would make the motivation sufficient in establishing a prima facie case of obviousness.
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 ALEX W MOK whose telephone number is (571)272-9084. The examiner can normally be reached 8am-4pm.
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/ALEX W MOK/Primary Examiner, Art Unit 2834
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