DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This Office Action is responsive to the Applicant's communication filed 09 December 2025. In view of this communication and the amendment concurrently filed: claims 1-16 were previously pending; claim 2 was canceled by the amendment; and thus, claims 1 and 3-16 are now pending in the application.
Response to Arguments
The Applicant’s arguments, filed 09 December 2025, have been fully considered but are not persuasive.
The Applicant’s first argument (pages 5-6 of the Remarks) alleges that the drawings show the newly recited “plug-in shoes” in figure 3. However, the annotated figure in the Remarks does not clearly point to any feature which clearly represents said plug-in shoes, and it is unclear what they might be pointing to since the only disclosure of said shoes in the specification states that the motor contacts are “accommodated in plug-in shoes for contacting the electric motor” (¶ 0028 of the specification). The Remarks do not even indicate what structure is indicated, stating only that the figure “illustrates structure” which “corresponds to the claimed plug-in shoes”. Since this feature is being relied upon for patentability, illustration and description of the plug-in shoes are clearly necessary to understand the scope of the invention. Since no such illustration has been provided, the drawings are objected to as failing to show claimed subject matter.
The Applicant’s second argument (pages 6-11 of the Remarks) alleges that Hoshikawa does not disclose the problem of improving modularity as discussed in the present application. The argument also concludes that this lack of disclosure precludes Kowalewski from being used to render obvious the claimed plug-in shoes, but offers no explanation or evidence in support of this conclusion. While the argument points to the amended limitations at multiple points, it is noted that no actual difference in structure between the two devices is specifically addressed. Regardless, the argument is moot as this desired goal of enhanced modularity is neither recited in the claims nor a patentably distinct feature of the device.
As discussed during the interview held on 03 December 2025, the examiner has assumed that the “plug-in shoes” refers to notches or grooves in the outer surface of the motor, into which the metal contact assembly is inserted. However, this assumption does not appear to have ever been confirmed by the Applicant, and no distinct structure has been attributed to said plug-in shoes. While it is acknowledged that Hoshikawa does not disclose notches or grooves in the outer surface of the motor, into which the metal contact assembly is inserted, the previously discussed Kowalewski reference does disclose this feature, thus rendering obvious the newly amended limitations.
The Applicant’s third argument (pages 11-13 of the Remarks) alleges that the Kowalewski reference cannot be applied to render the claimed invention obvious because it does not disclose solving the same problem described in the present application, i.e. it is non-analogous art, allegedly. However, a reference is analogous art to the claimed invention if, either, “the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem)” or “the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention)”. Note that "same field of endeavor" and "reasonably pertinent" are two separate tests for establishing analogous art; it is not necessary for a reference to fulfill both tests in order to qualify as analogous art. See Bigio, 381 F.3d at 1325, 72 USPQ2d at 1212. Thus, since both Hoshikawa and Kowalewski are in the field of electric motor driven actuators used in vehicles (see the abstract of either reference), as is the present invention (see ¶ 0001 of the specification), the references clearly qualify as analogous art and this argument is unpersuasive.
Priority
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d) or (f), 365(a) or (b), or 386(a), which papers have been placed of record in the file.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “plug-in shoes” (claim 1, line 14) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Disclosure
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant's cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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.
Claim(s) 1 and 3-16 is/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 pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation “wherein the electric motor and the at least one metal contact assembly are configured for pre-assembly by inserting the motor contacts into the plug-in shoes”. Firstly, the scope of the term “plug-in shoes” is unclear as this feature is neither shown in the drawings nor described in sufficient detail in the specification. Secondly, the function of how the motor is “configured for pre-assembly” is unclear since the corresponding structure, i.e. said “plug-in shoes”, is not disclosed in the specification. See In re Dossel, 115 F.3d 942, 946-47, 42 USPQ2d 1881, 1885 (Fed. Cir. 1997). Thus, since the corresponding structure is not defined, the scope of the claims cannot be reasonably ascertained, thus rendering the claims indefinite.
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.
Claim(s) 1, 3-8, and 15-16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoshikawa et al. (US 5,564,308), hereinafter referred to as “Hoshikawa”, in view of Kowalewski et al. (US 5,909,918), hereinafter referred to as “Kowalewski”.
Regarding claim 1, Hoshikawa discloses an electric motor-driven actuation device for motor vehicle applications (fig. 1-5; col. 1, lines 5-7), the actuation device comprising:
an at least two-piece housing [1] made of plastic including a body [2] that defines a housing cavity [23,52], and a cover [3] (fig. 1-3; col. 2, lines 1-10, 59-66),
an electric motor [24] arranged in the housing [1] (fig. 1; col. 2, lines 46-52), and
at least one metal contact assembly [54-56] for the electric motor [24] (fig. 1-2, 4; col. 4, lines 7-25; it is common knowledge that contact assemblies are made from metal, in order to effectively conduct electricity),
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wherein the electric motor [24] and the metal contact assembly [54-56] define a unit [24,54-56] that is pre-assembled for jointly positioning the electric motor [24] and the metal contact assembly [54-56] in the housing cavity [23,52] for housing the unit [24,54-56] (fig. 2; col. 4, lines 40-53; “the connecting plates 54 {are} engaged with each terminal 55 of the motor 24. Thereafter, the motor 24 is supported in the recess 23a”),
wherein the at least one metal contact assembly [54-56] includes a stamped sheet metal part [54], a plurality of plug pins [56], and a plurality of motor contacts [55] (fig. 1, 4; col. 4, lines 15-18; the assemblies are formed of “plates”, i.e. sheets, and the method of making, i.e. stamping, does not impart any additional structural limitations), and
wherein the electric motor [24] and the at least one metal contact assembly [54-56] are configured for pre-assembly such that the at least one metal contact assembly [54-56] is fixed to the electric motor [24] (fig. 2; col. 4, lines 40-53; “the connecting plates 54 {are} engaged with each terminal 55 of the motor 24. Thereafter, the motor 24 is supported in the recess 23a”).
Hoshikawa does not disclose that the electric motor [24] includes plug-in shoes, or that the motor contacts [55] are inserted into the plug-in shoes.
Kowalewski discloses an electric motor-driven actuation device for motor vehicle applications (fig. 1-3; col. 2, lines 7-14), comprising an electric motor [46] and a metal contact assembly [50,54,58] having motor contacts [mc] (fig. 1; col. 2, lines 25-36),
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wherein the electric motor [46] includes plug-in shoes [ps], and wherein the electric motor [46] and the at least one metal contact assembly [50,54,58] are assembled by inserting the motor contacts [mc] into the plug-in shoes [ps] in the electric motor [46] such that the at least one metal contact assembly [50,54,58] is fixed to the electric motor [46] (fig. 1; the tips of the contacts are inserted into notches/grooves on the outer surface of the motor).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the motor of Hoshikawa having plug-in shoes for inserting the motor contacts as taught by Kowalewski, in order to better protect the connection between the motor and the contacts during assembly, since internally mounted connections could not be inadvertently impacted or otherwise damaged when the motor is inserted into the casing.
Regarding claim 3, Hoshikawa, in view of Kowalewski, discloses the actuation device according to claim 1, as stated above, wherein the housing cavity [23,52] has areas including a motor cavity [23] that houses the motor [24] and a contact cavity [52] that houses the metal contact assembly [54-56], and the motor cavity [23] and the contact cavity [52] are connected to one another (fig. 3; col. 4, lines 6-18; the cavities are connected by grooves 57a through which the terminals pass).
Regarding claim 4, Hoshikawa, in view of Kowalewski, discloses the actuation device according to claim 3, as stated above, wherein the body [2] has two pieces including a motor body [2m] and a plug body [2p], which are connected to one another (fig. 1-3; each portion of the housing contains a space for the motor and a space for the contacts).
Regarding claim 5, Hoshikawa, in view of Kowalewski, discloses the actuation device according to claim 4, as stated above, wherein the motor cavity [23] is arranged in the motor body [2m], and the contact cavity [52] is arranged in the plug body [2p] (fig. 1-3).
Regarding claim 6, Hoshikawa, in view of Kowalewski, discloses the actuation device according to claim 3, as stated above, wherein the unit [24,54-56] is inserted perpendicularly into the motor cavity [23] and the contact cavity [52] (fig. 1-4; the motor/contacts are inserted in the downward direction of figure 4, which is perpendicular to the shaft direction).
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Regarding claim 7, Hoshikawa, in view of Kowalewski, discloses the actuation device according to claim 5, as stated above, wherein the cover [3] has two pieces including a motor cover [3m] and a plug cover [3p], which are connected to one another (fig. 1-3; each portion of the housing contains a space for the motor and a space for the contacts).
Regarding claim 8, Hoshikawa, in view of Kowalewski, discloses the actuation device according to claim 7, as stated above, wherein the motor cover [3m] closes the motor body [2m] to cover the motor cavity [23], and the plug cover [3p] closes the plug body [2p] to cover the contact cavity [52] (fig. 1-4).
Regarding claim 15, Hoshikawa, in view of Kowalewski, discloses the actuation device according to claim 3, as stated above, wherein the metal contact assembly [54-56] includes two bendable plug pins that are held in the metal contact cavity [52] (fig. 1-4; figure 4 shows the plates bent into an S-shape to fit through grooves 57a).
Regarding claim 16, Hoshikawa, in view of Kowalewski, discloses the actuation device according to claim 1, as stated above, wherein the plug pins [56] extend from the stamped sheet metal part [54] to form an L-shape (fig. 4; col. 4, lines 15-18).
Claim(s) 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoshikawa and Kowalewski as applied to claim 1 above, and further in view of Bruees et al. (DE 19755497 C1), hereinafter referred to as “Bruees”.
Regarding claim 9, Hoshikawa, in view of Kowalewski, discloses the actuation device according to claim 1, as stated above, wherein the body [2] and the cover [3] are sealed up to a plug opening [52p] by a connection [4] (fig. 1-3; col. 2, lines 1-9).
Hoshikawa does not disclose the connection [4] being an adhesive connection that provides a hermetic seal.
Bruees discloses a device for motor vehicle applications (¶ 0001), comprising a two-piece plastic housing [1-2] including a body [2] and a cover [1] (fig. 1; ¶ 0029-0030), wherein the body [2] and the cover [1] are hermetically sealed up to a plug opening [4] by an adhesive connection (¶ 0020, 0031; the housing is hermetically sealed using a method of plastic welding, specifically laser welding).
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It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to hermetically seal the housing of Hoshikawa using a plastic welding process as taught by Bruees, in order to eliminate the need for additional seals and fastening materials (¶ 0020-0021, 0036 of Bruees).
Regarding claim 10, Hoshikawa, in view of Kowalewski and Bruees, discloses the actuation device according to claim 9, as stated above, wherein the plug opening [52p] has a seal [4] (fig. 1-4; col. 2, lines 1-9).
Regarding claim 11, Hoshikawa, in view of Kowalewski and Bruees, discloses the actuation device according to claim 9, as stated above, wherein the body [2] and the cover [3] further are sealed up to an actuating element opening [8] by the connection [4] (fig. 1-3; col. 2, lines 1-9); and Bruees further discloses the seal being hermetically sealed and the connection being an adhesive connection (¶ 0020, 0031; the housing is hermetically sealed using a method of plastic welding, specifically laser welding).
Regarding claim 12, Hoshikawa, in view of Kowalewski and Bruees, discloses the actuation device according to claim 9, as stated above, wherein Bruees further discloses that the adhesive connection is a laser-welded connection (¶ 0020, 0031; the housing is hermetically sealed using a method of plastic welding, specifically laser welding).
Regarding claim 13, Hoshikawa, in view of Kowalewski and Bruees, discloses the actuation device according to claim 11, as stated above, wherein Bruees further discloses that the adhesive connection is a laser-welded connection (¶ 0020, 0031; the housing is hermetically sealed using a method of plastic welding, specifically laser welding).
Regarding claim 14, Hoshikawa, in view of Kowalewski and Bruees, discloses the actuation device according to claim 11, as stated above, wherein the plug opening [52p] and the actuator opening [8] each has a seal [4] (fig. 1-4; col. 2, lines 1-9).
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Prior art:
Nishio et al. (US 2022/0029502 A1) discloses an actuator for use in motor vehicles comprising a motor and contact assembly disposed in a two-piece housing.
Hirabayashi et al. (US 2020/0266683 A1) discloses an actuator comprising a motor and contact assembly disposed in a two-piece housing.
Maeda (US 2016/0126680 A1) discloses an actuator comprising a motor and contact assembly disposed in a two-piece housing.
Taylor et al. (US 2015/0035300 A1) discloses an actuator for use in motor vehicles comprising a motor disposed in a two-piece housing.
Nishio et al. (US 2014/0292003 A1) discloses an actuator for use in motor vehicles comprising a motor and contact assembly disposed in a two-piece housing.
Basavarajappa et al. (US 2013/0154402 A1) discloses an actuator for use in motor vehicles comprising a motor and contact assembly disposed in a two-piece housing.
Inoue (US 5,746,076) discloses an actuator for use in motor vehicles comprising a motor and contact assembly disposed in a two-piece housing.
Conclusion
Applicant's amendment necessitated any 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 extension fee 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 date of this final action.
This action is a final rejection and closes the prosecution of this application. Applicant’s reply under 37 CFR 1.113 to this action is limited to an appeal to the Patent Trial and Appeal Board, an amendment complying with the requirements set forth below, or a request for continued examination (RCE) to reopen prosecution where permitted.
General information on the Patent Trial and Appeal Board is available at: www.uspto.gov/patents/patent-trial-and-appeal-board/about-ptab/new-ptab. The information at this page includes guidance on time limited options that may assist the applicant contemplating appealing an examiner’s rejection. It also includes information on pro bono (free) legal services and advice available for those who are under-resourced and considering an appeal at: https://www.uspto.gov/patents/patent-trial-and-appeal-board/patent-trial-and-appeal-board-pro-bono-program-independent. The page is best reviewed promptly after applicant has received a final rejection or the claims have been twice rejected because some of the noted assistance must be requested within one month from the date of the latest rejection. See MPEP § 1204 for more information on filing a notice of appeal.
If applicant should desire to appeal any rejection made by the examiner, a Notice of Appeal must be filed within the period for reply. The Notice of Appeal must be accompanied by the fee required by 37 CFR 41.20(b)(1). The current fee amount is available at: www.uspto.gov/Fees.
If applicant should desire to file an after-final amendment, entry of the proposed amendment cannot be made as a matter of right unless it merely cancels claims or complies with a formal requirement made in a previous Office action. Amendments touching the merits of the application which otherwise might not be proper may be admitted upon a showing of good and sufficient reasons why they are necessary and why they were not presented earlier.
A reply under 37 CFR 1.113 to a final rejection must include cancellation of or appeal from the rejection of, each rejected claim. The filing of an amendment after final rejection, whether or not it is entered, does not stop the running of the statutory period for reply to the final rejection unless the examiner holds all of the claims to be in condition for allowance.
If applicant should desire to continue prosecution in a utility or plant application filed on or after May 29, 2000 and have the finality of this Office action withdrawn, an RCE under 37 CFR 1.114 may be filed within the period for reply. See MPEP § 706.07(h) for more information on the requirements for filing an RCE.
The application will become abandoned unless a Notice of Appeal, an after final replay that places the application in condition for allowance, or an RCE has been filed properly within the period for reply, or any extension of this period obtained under either 37 CFR 1.136(a) or (b).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael Andrews whose telephone number is (571)270-7554. The examiner can normally be reached on Monday-Thursday, 8:30am-3:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Oluseye Iwarere can be reached at 571-270-5112. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael Andrews/
Primary Examiner, Art Unit 2834