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 .
Response to Arguments
Applicant’s arguments filed March 20, 2026, regarding the claim objections (page 6) have been fully considered and – in light of the amendment - are persuasive therefore the related objections have been withdrawn.
Applicant’s arguments regarding the 35 U.S.C. 103 claim rejections (pages 6-10) have been fully considered but are not persuasive for the following reasons, therefore the related rejections have been maintained:
In response to applicant's argument (page 8, para. 1: “Boyle describes…”- para. ) that a combination of Boyle and JAES would not result in the claimed invention because, if it rotated on a different axis, the second sun gear would not rotate with the first carrier and the second planetary gears would not engage the teeth of the housing, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981), MPEP 2145 (III). In this case the teachings of JAES are considered to demonstrate that a person having ordinary skill in the art would recognize that one gearset may engage with another while rotating on separate axes. It therefore would have been obvious to modify Boyle such that the first and second planetary gear stages rotated about different axes. Further modifications, such as arranging the second sun gear to rotate with the first carrier and the second planetary gears to engage with teeth of the housing, by, for example, providing an intermediate gear between the second sun gear and the first carrier, are also suggested by JAES as discussed in the 103 rejections of claims 1 and 5 below, or considered within the ability of a person having ordinary skill in the art.
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.
Claims 1, 3-6, and 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over Boyle (US-20200283064-A1) in view of JAES (www.youtube.com/watch... Note URL on PTO-892) (note: the underlined portions relate to the latest amendment, for the applicant’s convenience) (note that the MS Word version of the Office Action shows annotated figures in color, as opposed to in grayscale as printed in the PDF version of the same document).
Regarding Claim 1, Boyle teaches a steering system for use in turning steerable vehicle wheels (Abstract), the steering system comprising:
an electric motor (Motor 62, Fig. 1) having a first output shaft (Output Shaft 64, Fig. 3) rotatable about a first axis (Axis 74, Fig. 3);
a first planetary gear stage (First Planetary Gear Stage 80, Fig. 3) having a first sun gear (Sun Gear 82, Fig. 3), first planetary gears (Planetary Gears 84, Fig. 3) meshed with the first sun gear (82), and a first carrier (Carrier 86, Fig. 3) connected to the first planetary gears (84), rotation of the first output shaft (64) urging the first sun gear (82) to rotate about the first axis (74), rotation of the first sun gear (82) urging the first planetary gears (84) to rotate and orbit the first sun gear (82), the first carrier (86) being urged to rotate about the first axis (74) in response to the first planetary gears (84) rotating and orbiting the first sun gear (82);
a second planetary gear stage (Second Planetary Gear Stage 100, Fig. 3) having a second sun gear (Sun Gear 102, Fig. 3), second planetary gears (Planetary Gears 104, Fig. 3) meshed with the second sun gear (102), and a second carrier (Carrier 106, Fig. 3) connected to the second planetary gears (104), the first carrier (106) applying a torque to the second sun gear (102) to urge the second sun gear (102) to rotate about {the first axis} (74), rotation of the second sun gear (102) urging the second planetary gears (104) to rotate and orbit the second sun gear (102), the second carrier (106) being urged to rotate about {the first axis} (74) in response to the second planetary gears (104) rotating and orbiting the sun gear (102); and
a second output shaft (Output Shaft 140, Fig. 3) connected to the second carrier (106) and a steering wheel (Steering Wheel 30, Fig. 3) such that rotation of each of the second carrier (106) and the steering wheel (30) urges the second output shaft (140) to rotate about {the first axis} (74), the second output shaft (140) being coupled to the steerable vehicle wheels (Wheels 12, Fig. 1) such that rotation of the second output shaft (140) affects steering of the steerable vehicle wheels (as illustrated in Fig. 1 and taught in Paras. [0014]- [0015]).
Boyle does not teach that the second sun gear rotates about a second axis where the second axis is different than the first axis.
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JAES teaches, in a related description of the function of gear reducers (Title: “How Reduction Drive and Gearmotors work…”), a first gear (“G1”, Time 0:57 Annotated) which rotates about a first axis (“AX1”, Time 0:57 Annotated) and a second gear (“G2”, Time 0:57 Annotated) which rotates about a second axis (“AX2”, Time 0:57 Annotated); the first (AX1) and the second (AX2) axes being different (as illustrated in Time 0:57 Annotated).
The gearset of JAES is arranged such that at least one intermediate gear (“GINT”, Time 0:57 Annotated) connects the first gear (G1) to the second gear (G2) such that rotation of the first gear (G1) urges the second gear (G2) to rotate about the second axis (as illustrated in Time 0:50- 1:00 and Time 0:57 Annotated) (note: these teaching relate to claim 5 as discussed below).
The gearset of JAES is further arranged such that the first (AX1) and second (AX2) axes are parallel to one another (as illustrated in Time 0:57 Annotated) (note: these teaching relate to claim 14 as discussed below).
The gearset of JAES is further arranged such that each of the first (AX1) and second (AX2) axes intersect a singular alignment axis (“AXA”, Time 0:57 Annotated) that extends transverse to both of the first and second axes (as illustrated in Time 0:57 Annotated) (note: these teaching relate to claim 15 as discussed below).
It would have been obvious to a person of ordinary skill in the art having the teachings of Boyle and JAES in front of them before the effective filing date of the claimed invention, to modify Boyle’s steering system such that the second sun gear rotates about a second axis which is different than the first axis as suggested by JAES. A person of ordinary skill in the art would have appreciated the advantage of arranging the gearset such that it used less axial space that would beneficially make a more compact assembly.
Regarding Claim 3, Boyle further teaches that the first (80) and second (100) planetary gear stages are provided in a housing (Housing 72, Fig. 2C) including teeth (Teeth 76, Fig. 2C) that mesh with the second planetary gears (104) (as illustrated in Fig. 2B and taught in Para. [0022]).
Regarding Claim 4, Boyle further teaches that the first planetary gear stage (80) includes a ring gear (Teeth 76 forming and functioning as a ring gear) in the housing (72) that meshes with the first planetary gears (84) (as illustrated in Fig. 2C and taught in Para. [0020]).
Regarding Claims 5, 14, and 15, Boyle, as modified by JAES, teaches all limitations (see the 103 rejection of claim 1 above for the teachings of JAES and motivation to combine them with the steering system of Boyle).
Regarding Claim 6, Boyle, as modified by JAES to include, for example, an intermediate gear, further teaches that the first planetary gear stage (80), the second planetary stage (100) and the at least one intermediate gear are in a housing (the First 80 and Second Planetary Gear Stages being in Housing 72 as illustrated in Figs. 2A- 2C).
Regarding Claim 12, Boyle further teaches:
a pinion (Pinion 32, Fig. 2C) connected to a steering wheel (30) such that rotation of the steering wheel (30) results in rotation of the pinion (32) about a third axis (Pinion 32 connected to Steering Wheel 30 as taught in Para. [0014] and rotating about an axis formed along its length); and
a worm wheel (Gear 148, Fig. 2C) meshed with the pinion (32) and connected to the second output shaft (140) such that the second output shaft (140) is connected to the steering wheel (30) via the pinion (32) and the worm wheel (148) (Gear 148 meshing with Pinion 32 and being connected to Output Shaft 140 through Carrier 86 as illustrated in Fig. 2C and taught in Para. [0029]).
Regarding Claim 13, Boyle further teaches that the first sun gear (82) is formed integrally with the first output shaft (64) as a single monolithic piece (as illustrated in Fig. 3).
Regarding Claim 16, Boyle further teaches a steering linkage (Steering Linkage 40, Fig. 1) having a first portion (First Steering Member 42, Fig. 1) connected to the second output shaft (First Steering Member 42 being connected to Output Shaft 140 as illustrated in Fig. 1) and a second portion (Second Steering Member 52, Fig. 1) connected to the steerable vehicle wheels (Second Steering Member 52 being connected to Wheels 12 through Third Steering Member 56 as illustrated in Fig. 1) such that rotation of the second output shaft (140) affects steering of the steerable vehicles wheels (as taught in Paras. [0015]- [0016]).
Regarding Claim 17, Boyle further teaches a sensor (Torque Sensor 152, Fig. 1) producing a signal indicative of a vehicle condition (as taught in Para. [0026]) and a controller (Controller 150, Fig. 1) connected with the sensor (152) and the motor (62), the controller (150) being operable to control rotation of the first output shaft (64) as a function of the signal from the sensor (Controller 150 being connected to Torque Sensor 152 and Motor 62 as illustrated in Fig. 1 and operable to control Output Shaft 64 based on Torque Sensor 152 as taught in Paras. [0026]- [0027]).
Regarding Claim 18, Boyle further teaches that the sensor (152) comprises at least one of a torque sensor (Torque Sensor 152) for sensing a torque applied to the steering wheel (30) and/or a position sensor (Position Sensor, Fig. 1) for sensing the position of the steering wheel (as taught in Para. [0026]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Boyle and JAES in view of Nofzinger (US-20190092374-A1).
Regarding Claim 2, Boyle does not teach that either of the first and second planetary gear stages have a gear ratio of 3:1 to 10:1 (Para. [0021] and [0023] teach ratios of 75:1- 500:1 and 15:1 to 22:1).
Nofzinger teaches, in another steering assembly (Abstract), a first and second planetary gear stage (First 62 and Second 64 Planetary Gear Sets, Fig. 2) each having a gear reduction ratio that is between 3:1 and 10:1 (Para. [0032] teaches that First 62 and Second 64 Planetary Gear Sets each have a gear ratio of 4:1).
A person of ordinary skill in the art would recognize that the gear reduction ratio is directly correlated to a torque multiplication of the assistance motor, which is a desirable characteristic of the steering system (as a “result effective variable”, per MPEP 2143 and 2144.05-II-B). Thus, it would have been obvious to one having ordinary skill in the art at the time the application was filed, to modify Boyle’s steering system such that the gear reduction ratio is between 3:1 and 10:1, as suggested by Nofzinger, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233; MPEP 2144.05-II-A. Please note that in the instant application, the Applicant has not disclosed any criticality for the claimed limitation.
Allowable Subject Matter
Claims 7-11 are 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.
The following is a statement of reasons for the indication of allowable subject matter:
A rejection under 35 U.S.C. §§ 102/103 is not made because the claims are patentably distinguishable from the prior art of record. Every element of the claims are not taught by any of the references individually and the prior art of record fails to permissibly teach the overall combination as claimed. Even if one could construe the prior art of record such that the combination disclosed each and every limitation of the claims, the ordered combination would not have been obvious to one ordinarily skilled in the art because doing so would require improper hindsight reasoning in view of the present Specification, and furthermore, there is no teaching, suggestion, or motivation to combine the aforementioned references in reference to themselves or in knowledge generally available to one of ordinary skill in the art before the effective filing date of the claimed invention.
The closest prior art of record, Boyle, in combination with JAES and Nofzinger, generally discloses a steering system with similar components to the claimed invention, as highlighted in the 103 rejections discussed above.
However none of these, individually or combined, discloses first and second intermediate gears which are fixed, respectively, to a first carrier of a first planetary gear stage and a second sun gear of a second planetary gear stage such that rotation of the first intermediate gear urges the second intermediate gear to rotate.
Even if each and every element of the present invention were taught individually by the aforementioned references, combining the references as an ordered combination would not have been obvious to one ordinarily skilled in the art because doing so would require improper hindsight reasoning in view of the present Specification, and furthermore there is no teaching, suggestion, or motivation to combine the aforementioned references present in the aforementioned references themselves or in knowledge generally available to one of ordinary skill in the art.
For at least these reasons, claims 7-11, as far as they include all of the limitations of the base claim and any intervening claims, are indicated as reciting allowable subject matter.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 TYLER JAY STANLEY whose telephone number is (571)272-3329. The examiner can normally be reached Monday- Friday 8:30-5:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Valentin Neacsu, Ph.D. can be reached at (571)272-6265. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TYLER JAY STANLEY/Examiner, Art Unit 3611 /VALENTIN NEACSU, Ph.D./Supervisory Patent Examiner, Art Unit 3611
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