Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 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.
Specification
The amendment filed June 15, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the position, structure and relative size of the switch, gearbox 261 and clutch 262 in replacement figures 1A. Applicant’s originally filed disclosure taught that the element that 260, 261 & 262 currently point to was mechanical seal 211. The mechanical seal is also in US Patent N0. 11,648,691, which is a patent by the same Applicant and inventive entity as the instant invention, and which illustrates in figure 1 a very similar tooling changer with the same mechanical seal 211. The '691 patent states that the switch (i.e. gearbox or clutch) is an alternative design that is not shown in the figures (see col. 5 lines 22-30 of the '691 patent). While Applicant’s originally filed disclosure taught a switch comprising a gearbox 261 or clutch 262, it did not teach the specific location, structure, and/or size of the gearbox/clutch with respect to other components of the tooling changer as introduced by replacement figures 1A. Further, the structure of the element that 260/261/262 point to has the structure of a mechanical seal and not the structure of both a gearbox and clutch because if a gearbox were used to provide different speeds and torques between output shafts 212 & 213, one would expect gears and/or other elements to extend annularly around each of shafts 212 & 213, wherein the element that reference characters 211 & 260/261/262 points to only extends annularly around shaft 213.
Figure 1A is also objected to for introducing new matter for illustrating two motors 220 & 221. Applicant’s originally filed specification repeatedly states that the tooling changer comprised a single motor.2 Examiner recognizes that Applicant’s originally filed specification states the following later on: “By way of example and not limitation, adaptive tooling interface 20 may use one or more of its motors 220,221 as generators to power or otherwise charge a subsea vehicle 2”. However, given the totality of the teachings of the originally filed disclosure, one of skill in the art would believe that the tooling changer has only a single motor, and that the preceding recitation referring to two motors was accidentally copied from application 16/254,293.3
Applicant is required to cancel the new matter in the reply to this Office Action.
The disclosure is further objected to because of the following informalities: 26a refers to both guide of tool interface 20 and guide receiver of external tool (see ¶ [0034] of Applicant’s originally filed disclosure).
Appropriate correction is required.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference characters not mentioned in the description: 204, 205, 207, and 216. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign mentioned in the description: 213B.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “212” and “213” have been used to designate both output shafts of tool changer (see left drawing of figure 3) and elements of external tool 110 (see right drawing of figure 3). Applicant’s disclosure teaches the outputs 212/213 to provide power to the external tool 110—not to be part of the external tool.
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters 211 and 260/261/262 have been used to designate the same part.
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 switch must be shown or the feature canceled from the claims. As detailed in the “Specification” section above, one of skill in the art would not believe that the element that was originally labeled as mechanical seal 211 is the gearbox and clutch.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) 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. 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.
Claim Objections
Claim 14 is objected to because of an informality: the word “the” should be inserted between “with” and “external” in line 5. Appropriate correction is required.
Rejections under 35 USC 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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
Claim 11 is 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 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 11 recites the adaptive tooling changer further comprises an output shaft configured to connect to a selected external tool regardless of an angle between the output shaft and the selected external tool. Applicant’s disclosure does not reasonably convey to one of skill in the art that Applicant’s had possession of this limitation at the time of filing. Based on the drawings of figure 1C illustrating the output shaft 294, and figure 9 illustrating the tooling changer 20 and external tools 110, the output shaft must be at a certain angle(s) with respect to the external tool for the shaft to be connected to the external tool. For example, the output shaft illustrated in figure 1C wouldn't be able to connect to an external tool (for example the external tool illustrated in figure 8) if it were perpendicular to the longitudinal axis of the external tool, or if the tool changer 20 of figure 9 was rotated 180 degrees so that the output shaft extends away from the external tool 110.
The following is a quotation of 35 U.S.C. 112:
(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 1-14 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 applicant regards as the invention.
Claims 1 and 12 each recite a switch operatively connected to the single motor, wherein the first and second power outputs are operatively in communication with the switch. Applicants need not confine themselves to the terminology used in the prior art, but are required to make clear and precise the terms that are used to define the invention whereby the metes and bounds of the claimed invention can be ascertained (see MPEP 2173.05(a)(I)). While an applicant may use terms in a manner contrary to or inconsistent with one or more of their ordinary meanings if the written description clearly redefines the terms, the written description must clearly redefine a claim term "so as to put a reasonable competitor or one reasonably skilled in the art on notice that the patentee intended to so redefine that claim term." See MPEP 2173.05(a)(III). In this case, the term "switch" is used in a manner contrary to or inconsistent with its ordinary meaning since the term "switch" is not ordinarily used to describe mechanical devices such as transmissions, gearboxes, or clutches. While the originally filed disclosure provides some examples of how they interpret a "switch", i.e. gearbox or clutch, it is unclear what the metes and bounds of the term "switch" is. For example, what other mechanical or electromechanical devices can read on "switch"? For purposes of examination, "switch" will be interpreted as a gearbox, clutch, or another mechanical transmission that allows shafts to rotate at different speeds and torques.
Claim 3 recites the first power output comprises a rotational speed output and the second power output comprises a torque output. This limitation is unclear because each of “rotational speed output” and “torque output” appear to be referring to rotational outputs. However, since different names are used it is implied that these outputs are different. Thus, it is unclear how these rotational outputs are different. Is this claim attempting to recite that the rotational speed output has a higher rotational speed than the torque output, and that the torque output has a higher torque than the rotational speed output?
Claim 11 recites a selected external tool and the rotation of the output shaft and the selected external tool. It is unclear if “a selected external tool” is referring to the selected external tool of claim 1. Further, "the rotation of the output shaft and the selected external tool" is confusing. Does this mean regardless of whether the output shaft is rotating (if so, the claim can be changed to recite “regardless of whether the output shaft and the selected external tool are rotating”)? Or a rotational angle between the output shaft and external tool (if so, the claim can be changed to recite “rotational angle”)?
Claim 12 recites a predetermined set of external tools twice. It is unclear if the second recitation is referring to the first recitation, or is introducing a second set of tools.
The rest of the claims are rejected for depending from one of claims 1 and 12.
Rejections under 35 USC 1034
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious5 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6, 8-10, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2019/0224858 (“Hansen”) in view of USPGPub No. 2020/0130112 (“Sleet”).
Regarding claim 1, Hansen teaches an adaptive tooling changer (¶ [0022]), comprising: a) a housing (21) (fig. 1, ¶ [0022], the examiner notes that the figures in the patent of Hansen, i.e. US Patent No. 11,648,691, provides clearer drawings, thus all references to the Hansen figures refer to both the publication and patent drawings); b) a single motor disposed at least partially in the housing (¶ [0040]). Claim 1 also recites c) a power connector operatively in communication with the single motor. Hansen teaches a “GA connector 201” (fig. 1, ¶ [0024]). One of skill in the art would reasonably infer the “GA connector 201” to be a general aviation electrical connection that supplies power to the tooling changer.
Hansen further teaches d) a switch operatively connected to the single motor (¶ [0040]); e) a first power output (213) operatively in communication with the switch and operative to provide power to an external tool selected from a predetermined set of external tools (fig. 1 & 9, ¶ [0022], [0026] & [0040]); and f) a second power output (212) operatively in communication with the switch and operative to provide power to the external tool selected from the predetermined set of external tools (fig. 1 & 9, ¶ [0022], [0026] & [0040]). Since Hansen is directed to a tooling changer that has two outputs that rotate at different speeds and torques, one of skill in the art would reasonably infer the switch/gearbox taught by Hanson (¶ [0040]) allows the shafts to rotate at different speeds and torques. This is because the single motor and “switch” embodiment replaces the two motor design of the illustrated embodiment (wherein the two separate motors allowed the outputs to rotate at different speeds and torques). One of skill in the art appreciates that gearboxes are commonly used to change the speed and torque between two rotating shafts. Thus, one of skill in the art will reasonably infer that the gearbox (i.e. switch) is operatively connected to both power outputs 212/213 and the motor so that the outputs 212/213 have different rotational speeds and torques.
Hansen fails to teach a power supply operatively in communication with the single motor and the power connector. This would be obvious in view of Sleet.
Sleet is also directed to a subsea torque supplying tool 100 having a motor therein (fig. 1, ¶ [0001] & [0017]). The tool 100 comprises an electronics section 118 at an end thereof that is connected to a subsea ROV 190 via a cable 192 that transmits electrical power from the ROV to the tool 100 (fig. 1, ¶ [0016] & [0022]). The electrical power provided to the electronics section 118 is then provided to the motors (¶ [0022]).
In this case, each of Hansen and Sleet are directed to a torque supplying device configured to be attached to a subsea ROV. While Hansen fails to explicitly state that the connector 201 is supplied power via an external source and the power is used to operate the motor, Sleet teaches that it is known for subsea torque supplying devices to have an electronics section at an end thereof that is configured to receive power from an external source such as an ROV, and wherein the power is provided to the motor of the torque supplying device. Thus, in order to supply power to the motor of Hansen, it would be obvious to modify the end of the tool changer (i.e. the end comprising connector 201) so that the power connector is configured to receive electrical power from an external power source/supply such as an ROV via a cable, and, provide the electrical power to the motor. One of skill in the art appreciates that powering the motor via an external power source/supply can have numerous advantages over internal power supplies (such as batteries), such as continuous power supply without runtime limits or performance drops due to drained batteries and lighter weight.
Given the above modification, the power supply is interpreted as the ROV or external power source, and the connector 201 is interpreted as the power connector. Further, since the power supply supplies electrical power to the motor via the power connector, each of the power supply, power connector, and motor are in operative and electrical communication with each other.
Regarding claim 2, Hansen further teaches the selected external tool comprises a first external tool selected from the predetermined set of external tools and a second external tool selected from the predetermined set of external tools, the first power output operative to provide power to the first external tool and the second power output operative to provide power to the second external tool (fig. 1, ¶ [0022]-[0023] & [0030], wherein each power output 212 & 213 can provide power to different tools).
Regarding claim 3, Hansen further teaches the first power output comprises a rotational speed output and the second power output comprises a torque output (¶ [0026]-[0027] & [0040]).
Regarding claim 4, Hansen further teaches the first power output comprises a mechanical power output and the second power output comprises an electrical power output, a data output, or an electrical power and data output (¶ [0026]-[0027] & [0040]). The examiner notes the second power output comprises an electrical power output is interpreted as an output that is capable of producing electrical power in an external tool. This interpretation is proper because Applicant’s originally filed disclosure does not teach the second output producing electrical power by itself—it teaches electrical power being produced when the second power output is connected/positioned with respect to an electrical interface of the external tool (see ¶ [0063] of Applicant’s originally filed disclosure). The rotating second power output 212 of Hansen is capable of generating electrical power in an external tool/device. For example, if the second power output 212 is connected to a rotor of the external tool/device that is part of a stator/rotor assembly, electrical power can be created. See also ¶ [0039] of Hansen teaching the tooling changer can drive an external motor to generate electrical power.
Regarding claim 5, Hansen further teaches the adaptive tooling changer provides the external tool selected from the predetermined set of external tools with simultaneous power and data communication through pin-less induction (¶ [0022]-[0023] & [0025]-[0026]).
Regarding claim 6, Hansen further teaches the switch comprises a gearbox or a clutch (¶ [0040]).
Claim 8 recites the adaptive tooling changer comprises a direct drive external tool interface without gears disposed inline to interface with the external tool selected from the predetermined set of external tools. Hansen teaches the tooling changer having an external tool interface 21c/21d to directly engage/dock with the external tools so that the rotational output is transferred to the external tool (figs. 1-3, ¶ [0022], [0028], [0030] & [0032]). This reads on a direct drive external tool interface since it directly transfers power output to the external tool. In addition, the external tool interface 21c/21d does not have gears disposed inline (see figs. 1-3 and the description generally which does not describe components 21c/21d having gears).
Claim 9 recites the power connector is configured to interface to an external power source. This is taught by the modification of Hansen in view of Sleet detailed in the 103 rejection of claim 1, above. Specifically, the end of the tooling changer has an electrical connection that is capable of interfacing to an external power source to provide power to the motor.
Claim 10 recites the external power source comprises a subsea vehicle power source, a cage power source, or a subsea asset power source. This is taught by the modification of Hansen in view of Sleet detailed in the 103 rejection of claim 1, above. Specifically, the end of the tooling changer has an electrical connection that is capable of interfacing to a subsea vehicle/ROV to provide power to the motor.
Regarding claim 12, Hansen teaches a system useful to provide power to a subsea asset (¶ [0022]-[0023] & [0039]), comprising: a) a predetermined set of external tools (110) (figs. 9-11, ¶ [0013] & [0022]-[0023]), at least one external tool comprising: i) a mechanical power interface (¶ [0022]-[0023], e.g. tool interfaces with adaptive tooling changer so that mechanical power is transferred from tooling changer to tool); and ii) an electrical interface (¶ [0028], [0036] & [0039], wherein the outputs may comprise both a rotational power and electrical power—thus, there must be an electrical interface to receive electrical power from the tooling changer); b) an adaptive tooling changer, comprising the limitations of claim 1 (see rejection to claim 1 above). Hansen further teaches the first and second power outputs being part of an external tool changer interface (fig. 1, ¶ [0022]-[0023]).
Claim 14 recites a) the external tool changer interface comprises a direct drive interface; and b) the predetermined set of external tools comprises external tools comprising a complimentary direct drive interface adapted to interface with external tool changer direct drive interface. Hansen teaches the tooling changer having an external tool interface 21c/21d to directly engage/dock with the external tools so that the power outputs are directly transferred to the external tool (figs. 1-3, ¶ [0022], [0028], [0030] & [0032]). This reads on a direct drive interface and complimentary direct drive interface since the tooling changer directly transfers power output to the external tool.
In the alternative, claims 1-6, 8-10, 12, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Hansen in view of USPGPub No. 2022/0032476 (“Robertson”) and Sleet.
Regarding claim 1, Hansen in view of Sleet teach all the limitations as detailed in the previous 103 rejection above. Assuming arguendo that Hansen does not teach a switch as used in the claim, this would be obvious in view of Robertson.
Robertson is also directed to a tool changer (¶ [0002]). Robertson teaches a transmission unit 216 comprising gears that allow shaft 210 to have a different rotational speed than shaft 208 (fig. 2, ¶ [0063]).
In this case, each of Hansen and Robertson teach a device wherein one shaft rotates at a different speed than another. While Hansen teaches a single motor connected to two output shafts and a “switch”, wherein the output shafts rotate and different speeds and torques, Robertson teaches one of skill in the art that it is known to provide a transmission/gearbox in tools that are mechanically connected to two shafts and allow the shafts to rotate at different speeds. Thus, it would be obvious and predictable to modify Hansen so the switch is a transmission/gearbox operably connected to the motor and first and second output shafts to allow the shafts to rotate at different speeds and torques.
Regarding claim 12, Hansen in view of Sleet teach all the limitations as detailed in the previous 103 rejection above. Assuming arguendo that Hansen does not teach a switch as used in the claim, this would be obvious in view of Robertson for the same reasons detailed in the rejection to claim 1 immediately above.
Claims 2-6, 8-10, and 14 are rejected for the same reasons detailed in the previous 103 rejections.
Claims 7 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over either rejection of Hansen et al. as applied to claims 1 or 12, and further in view of Hirth joint, WikiPedia, Screen shot taken on April 19, 2021, available at https://en.wikipedia.org/wiki/Hirth_joint (“NPL”).
Regarding claim 7, Hansen fails to explicitly teach the adaptive tooling changer comprises a geared external tool interface to interface with the external tool selected from the predetermined set of external tools. However, this would be obvious in view of NPL.
NPL is directed to hirth joints (page 1, wherein all references to NPL refer to the document submitted with the Office action mailed on April 15, 2026). NPL teaches that hirth joints are a known way to connect rotating shafts/elements together (see description and figures on page 1; see also description on page 2). NPL teaches numerous benefits including the ability to transfer high loads, no lag in the joint, and the joint is self-centering (page 2).
In this case, Hansen is directed to coupling a rotating shaft of a tooling changer with a rotating shaft of an external tool. NPL teaches one of skill in the art that hirth joints are known connection means for rotating parts that can transfer high loads, have no lag in the joint, and are self-centering. Thus, it would be obvious and predictable to couple the rotating output and input of the tooling changer and external tool, respectively, via a hirth joint. Given this modification, the external tool interface of the tooling changer that connects with the external tool has a plurality of teeth in the circumferential direction, i.e. is geared, that mesh with a plurality of teeth of the interface of the external tool.
Regarding claim 13, Hansen fails to explicitly teach a) the external tool changer interface further comprises a geared external tool interface; and b) the predetermined set of external tools comprises external tools comprising a complimentary gearing interface adapted to interface with the geared external tool interface. However, this would have been obvious in view of NPL for the same reasons detailed in the rejection to claim 7, above.
Claim 14 recites a) the external tool changer interface comprises a direct drive interface; and b) the predetermined set of external tools comprises external tools comprising a complimentary direct drive interface adapted to interface with external tool changer direct drive interface. When modifying Hansen in view of NPL as detailed in the rejection to claim 7, above, the external interface of the tool changer has a hirth gearing that directly connects to a hirth gearing of the external tool, i.e. direct drive interface.
Response to Arguments
Applicant's arguments filed June 15, 2026 (“the remarks”) have been fully considered. Each of applicant’s remarks is set forth, followed by examiner’s response.
On page 14 of the remarks Applicant argues that switch is not indefinite because the specification states that it is a gearbox or clutch. Applicant further argues that it is not proper to take Official Notice as stated in MPEP 2144.
The rejection does not rely on Official Notice. Official Notice is used when making a 103 rejections as MPEP 2144 is directed to 103 rejections. This rejection is merely stating that the broadest reasonable interpretation of “switch” is unclear, and is attempting to interpret what a switch means. The rejection is based on other art in the field not referring to a gearbox or clutch as a “switch”, and based on definitions provided by dictionaries. It also would not be reasonable for the examiner to supply a reference that states everything that a “switch” is not, for many reasons, one of which being that one generally does not have to prove a negative since it is harder than proving a positive (for example, why would somebody list the millions of things that are not defined as a “switch”?). In this case, it would be much easier for the Applicant to provide a reference that uses the term “switch” to refer to devices related to gearboxes, clutches, etc., which the examiner notes they have not done.
While Applicant’s originally filed disclosure gives an example of a switch, i.e. “Switch 260 may comprise a gearbox or a clutch” (¶ [0026] of Applicant’s originally filed specification), this does not mean that the broadest reasonable interpretation of “switch” has to be a gearbox or clutch. As stated in the rejection, since “switch” is being used contrary to its ordinary meaning, the examiner still is not persuaded that the broadest reasonable definition of “switch” is understood. If Applicant intends for the “switch” to be a gearbox and/or clutch, they are free to change the term “switch” in the claims to “at least one of a gearbox or clutch”. If Applicant believes that “switch” should be interpreted as “gearbox and/or clutch” then such an amendment would not change the scope of the claims from their point of view.
On pages 18-19 of the remarks, Applicant argues that the Office action failed to address the third Graham factor.
MPEP 2141(II)(C) states: Any obviousness rejection should include, either explicitly or implicitly in view of the prior art applied, an indication of the level of ordinary skill. MPEP 2141.03(II) states: an invention may be held to have been obvious without a specific finding of a particular level of skill where the prior art itself reflects an appropriate level. In this case, the claim is directed to a tooling changer and holder, the main reference in the rejections is directed to a tool holder and changer, Robertson is directed to a tool changer and tool holder, and Sleet is directed to a torque tool 104 holder. Thus, the prior art itself reflects an appropriate level (i.e. one with sufficient experience and/or education with tool changers and/or tool holders). Applicant is free to put on record who they think a POSITA is and why they would not find the claimed invention obvious.
On pages 20-21 of the remarks, Applicant argues that Hansen fails to teach the two power outputs in communication with the switch since Hanson does not specify how the switch is connected. Applicant also argues that Hanson teaches the motor having two outputs that are part of the motor—not two power outputs in communication with the switch.
While the switch embodiment of Hansen is not illustrated and not discussed in elaborate detail, one of skill in the art, upon understanding the illustrated embodiment, reasonably infers how the switch embodiment functions. The illustrated embodiment of Hanson teaches two motors that respectively rotate two power outputs 212/213 with different toques and speeds (¶ [0023] & [0027]). In the alternative embodiment with the switch, Hansen states: “as opposed to using a plurality of motors 220 , 221 , one motor 220 with two outputs 212 , 213 may be used along with a switch (not shown in the figures) comprising a gearbox or clutch solution (not shown in the figures)” (¶ [0040]). Thus, the motor 220 is still operatively connected to both power outputs 212/213, wherein a gearbox is provided to change rotational speed and torque. One of skill in the art appreciates that gearboxes are commonly used to change the speed and torque between two rotating shafts. Thus, one of skill in the art will reasonably infer that the gearbox (i.e. switch) is operatively connected to both power outputs 212/213 so that the outputs 212/213 have different rotational speeds and torques. And since the power outputs 212/213 are operatively connected to the single motor, the gearbox (operatively connected to the outputs 212/213), is also operatively connected to the single motor.
The examiner doesn’t understand the alternative design that Applicant argues is plausible. Hansen explicitly states the single motor rotates the two power outputs 212 & 213—not that the motor has two other outputs connected to each of the power outputs. Even if a gearbox were directly connected to separate outputs of the motor—instead of the power outputs 212/213—this structure would still read on the claim since the power outputs, other outputs of the motor, gearbox, and motor are all operatively connected.
The examiner also notes that Applicant does not address the previously presented 103 rejection that used Robertson to teach a transmission unit 216 comprising gears that allow shaft 210 to have a different rotational speed than shaft 208.
Conclusion
Applicant's amendment necessitated the new grounds 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 See Title (i.e. “ADAPTIVE TOOLING INTERFACE WITH A SINGLE MOTOR”), Abstract, ¶ [0005] (i.e. ” Figs. 1A and 1B are cutaway views in partial perspective and Fig. 1C is a block diagram of an exemplary single motor embodiment of the claimed invention”),¶ [0022] (i.e. “Referring to Fig. 1A and 1B, in a first embodiment adaptive tooling changer 20 comprises single motor 220 with two outputs 212,213 … “, ¶ [0023] (i.e. “Adaptive tooling changer 20 typically comprises housing 21, single motor 220
disposed at least partially in housing 21, …”); see also original claim 1.
3 Application no. 16/254,293 is a previously filed application by the same Applicant, Assignee, and Inventors, wherein a lot of the instant specification and drawings are similar to Application no. 16/254,293.
4 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
5 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
Prosecution Insights