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 .
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 20200278012 A1 ("Holm") in view of US 20170349205 A1 ("Kaneko").
Claim 1: Holm teaches a return tube comprising: a first member (510) comprising a first body portion (Fig. 5); and a second member (520) comprising a second body portion (Fig. 5), wherein: the first body portion and the second body portion are formed symmetrically to each other and coupled to each other to form a path for circulating balls (Figs. 4 and 5; para. 45, lines 35-39), a first end (410) of the first and second body portions is coupled to a first hole (116) of a ball nut (111) and a second end (420) of the first and second body portions is coupled to a second hole (117) of the ball nut to circulate the balls in association with the ball nut (Figs. 2 and 4; para. 43, lines 3-10), flanges (440) are formed at each of the first and second body portions to be coupled to each other and protrude from outer surfaces of the first and second body portions (Fig. 4; para. 45, lines 11-16), and a coupling hole (534) is formed at one of the flanges and a coupling protrusion (532) protrudes from an other of the flanges facing the one of the flanges at which the coupling protrusion is formed and is inserted in the coupling hole formed at the one of the flanges (Figs. 4 and 5; para. 45, lines 19-25).
But does not teach the return tube, wherein an elastic material in a state of being elastically compressed is disposed between the coupling surfaces of the first and second body portions
However, Kaneko teaches the return tube, wherein an elastic material in a state of being elastically compressed is disposed between the coupling surfaces of the first and second body portions (para. 28, lines 1-8). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the invention of Holm with the features of Kaneko. One of ordinary skill in the art would have been motivated to do so as Kaneko teaches “an elastic member that is located at each of axially opposite sides of the bearing, and two walls that are arranged in the axial direction on an inner circumferential surface of the housing” (para. 28, lines 2-5) and doing so would reduce vibration.
Claim 2: The prior art teaches the limitations of claim 1 as noted above. Holm further teaches the return tube, wherein the flanges (440) include two or more flanges formed at each of the first and second body portions (Fig. 4).
Claim 3: The prior art teaches the limitations of claim 1 as noted above. Holm further teaches the return tube, wherein the flanges (440) include an even number of flanges formed at each of the first and second body portions (Fig. 4).
Claim 4: The prior art teaches the limitations of claim 1 as noted above. Holm further teaches the return tube, wherein the one of the flanges (440) and the other of the flanges facing each other are coupled to be in surface-contact with each other (Figs. 4 and 5).
Claim 5: The prior art teaches the limitations of claim 1 as noted above. Holm further teaches the return tube, wherein the first and second body portions of the first and second members have coupling surfaces that are in surface-contact with each other to form the path for circulating the balls (Figs. 4 and 5; para. 44, lines 1-9).
Claim 7: The prior art teaches the limitations of claim 1 as noted above. Kaneko further teaches the return tube, wherein the elastic material is integrally formed with one of the coupling surfaces of the first and second body portions (para. 109, lines 3-7).
Claim 8: The prior art teaches the limitations of claim 1 as noted above. Holm further teaches the return tube, wherein the material is fixedly coupled or fused to one of the coupling surfaces of the first and second body portions (para. 44, lines 1-9). But does not teach an elastic material.
However, Kaneko teaches the return tube, wherein an elastic material (para. 28, lines 1-8). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the invention of the prior art with the features of Kaneko. One of ordinary skill in the art would have been motivated to do so as Kaneko teaches “an elastic member that is located at each of axially opposite sides of the bearing, and two walls that are arranged in the axial direction on an inner circumferential surface of the housing” (para. 28, lines 2-5) and reduce the vibrations.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over US 20200278012 A1 ("Holm") in view of US 20170349205 A1 ("Kaneko") and further in view of US 20030075878 A1 ("Sehr").
Claim 9: The cited prior art teaches the limitations of claim 1 as noted above. Holm does not teach the return tube, wherein the coupling protrusion protruding from the other of the flanges includes: an insertion support portion extending from the other of the flanges and supported on an inner circumferential surface of the coupling hole of the one of the flanges; and an outer support portion extending from the insertion support portion, having an outer diameter larger than an inner diameter of the coupling hole of the one of the flanges, and protruding outward of the coupling hole of the one of the flanges to be supported on an outer surface of the one of the flanges having the coupling hole.
However, Sehr teaches the return tube, wherein the coupling protrusion (coupling protrusion) protruding from the other of the flanges includes: an insertion support portion (insert support) extending from the other of the flanges and supported on an inner circumferential surface of the coupling hole of the one of the flanges (Annotated Fig. 2 below); and an outer support portion (outer support) extending from the insertion support portion, having an outer diameter larger than an inner diameter of the coupling hole of the one of the flanges, and protruding outward of the coupling hole of the one of the flanges to be supported on an outer surface of the one of the flanges having the coupling hole (Annotated Fig. 2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the invention of Holm with the features of Sehr. One of ordinary skill in the art would have been motivated to do so as Sehr teaches “sealing elements, serve in particular on motor vehicles for sealing, damping, gap-filling and similar” (Abstract)
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Annotated Figure. 2
Claim 10: The cited prior art teaches the limitations of claim 9 as noted above. Sehr further teaches the return tube, wherein the coupling protrusion has a cutout portion (cutout) at a center of the insertion support portion and the outer support portion of the coupling protrusion (Annotated Fig. 2).
Claim 11: The cited prior art teaches the limitations of claim 10 as noted above. Sehr further teaches the return tube, wherein a connecting rib (connecting rib) is disposed in the cutout portion of the coupling protrusion protruding from the other of the flanges (Annotated Fig. 2).
Claims 12-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 20200278012 A1 ("Holm") in view of US 20170349205 A1 ("Kaneko") and further in view of US 20050252321 A1 ("Hartig").
Claim 12: Holm teaches a return tube comprising: a first member (510) comprising a first body portion (Fig. 5); and a second member (520) comprising a second body portion (Fig. 5), wherein: the first body portion and the second body portion are formed symmetrically to each other and coupled to each other to form a path for circulating balls (Figs. 4 and 5; para. 45, lines 35-39), a first end (410) of the first and second body portions is coupled to a first hole (116) of a ball nut (111) and a second end (420) of the first and second body portions is coupled to a second hole (117) of the ball nut to circulate the balls in association with the ball nut (Figs. 2 and 4; para. 43, lines 3-10), flanges (440) are formed at each of the first and second body portions to be coupled to each other and protrude from outer surfaces of the first and second body portions (Fig. 4; para. 45, lines 11-16), and a coupling hole (534) is formed at one of the flanges and a coupling protrusion (532) protrudes from an other of the flanges facing the one of the flanges at which the coupling protrusion is formed and is inserted in the coupling hole formed at the one of the flanges (Figs. 4 and 5; para. 45, lines 19-25).
Holm however does not teach a fastening protrusion protrudes from one of the first and second body portions and a fastening groove is formed on an other of the first and second body portions such that the fastening protrusion is inserted in the fastening groove; and an elastic material in a state of being elastically compressed is disposed between the coupling surfaces of the first and second body portions.
But Hartig in a similar field of art teaches a fastening protrusion (17) protrudes from one of the first and second body portions and a fastening groove (16) is formed on an other of the first (14a) and second (14b) body portions such that the fastening protrusion is inserted in the fastening groove (Fig. 8; para. 45, lines 9-12). Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the invention of Holm with the features of Hartig. One of ordinary skill in the art would have been motivated to do so as Hartig teaches that “Two halves 14a and 14b are assembled together by placing their one ends adjoining the parting plane T2 behind each other, so that the projections 17 engage the receptions 16” (para. 45, lines 9-12).
Hartig does not teach the return tube, wherein an elastic material in a state of being elastically compressed is disposed between the coupling surfaces of the first and second body portions. However, Kaneko teaches the return tube, wherein an elastic material in a state of being elastically compressed is disposed between the coupling surfaces of the first and second body portions (para. 28, lines 1-8). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the invention of the cited prior are with the features of Kaneko. One of ordinary skill in the art would have been motivated to do so as Kaneko teaches “an elastic member that is located at each of axially opposite sides of the bearing, and two walls that are arranged in the axial direction on an inner circumferential surface of the housing” (para. 28, lines 2-5) and doing so would reduce vibration.
Claim 13: The cited prior art teaches the limitations of claim 12 as noted above. Hartig further teaches the return tube, wherein the fastening protrusion (17) is formed at an entire edge of the one of the first and second body portions and the fastening groove (16) is formed at an entire edge of the other of the first and second body portions (Fig. 8).
Claim 14: The cited prior art teaches the limitations of claim 12 as noted above. Hartig further teaches the return tube, wherein the fastening protrusion (17) is formed at a partial area of an edge of the one and the other of the first and second body portions and the fastening groove (16) is formed at a remaining partial area of the edge of the one and the other of the first and second body portions (Fig. 8).
Claim 15: The cited prior art teaches the limitations of claim 12 as noted above. Hartig further teaches the return tube, wherein the fastening protrusion (17) and the fastening groove (16) are fitted to each other (Fig. 8; para. 45, lines 9-12).
Claim 16: The cited prior art teaches the limitations of claim 12 as noted above. Holm further teaches the return tube, wherein the flanges (440) include two or more flanges formed at each of the first and second body portions (Fig. 4).
Claim 17: The cited prior art teaches the limitations of claim 12 as noted above. Holm further teaches the return tube, wherein the flanges (440) include an even number of flanges formed at each of the first and second body portions (Fig. 4).
Claim 18: The cited prior art teaches the limitations of claim 12 as noted above. Holm further teaches the return tube, wherein the one of the flanges (440) and the other of the flanges facing each other are coupled to be in surface-contact with each other (Figs. 4 and 5).
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 20200278012 A1 ("Holm") in view of US 20170349205 A1 ("Kaneko") and further in view of US 20050252321 A1 ("Hartig") and US 20030075878 A1 ("Sehr").
Claim 19: The prior art teaches the limitations of claim 12 as noted above. The cited prior art does not teach the return tube, wherein the coupling protrusion protruding from the other of the flanges includes: an insertion support portion extending from the other of the flanges and supported on an inner circumferential surface of the coupling hole of the one of the flanges; and an outer support portion extending from the insertion support portion, having an outer diameter larger than an inner diameter of the coupling hole of the one of the flanges, and protruding outward of the coupling hole of the one of the flanges to be supported on an outer surface of the one of the flanges having the coupling hole.
However, Sehr teaches the return tube, wherein the coupling protrusion (coupling protrusion) protruding from the other of the flanges includes: an insertion support portion (insert support) extending from the other of the flanges and supported on an inner circumferential surface of the coupling hole of the one of the flanges (Annotated Fig. 2 below); and an outer support portion (outer support) extending from the insertion support portion, having an outer diameter larger than an inner diameter of the coupling hole of the one of the flanges, and protruding outward of the coupling hole of the one of the flanges to be supported on an outer surface of the one of the flanges having the coupling hole (Annotated Fig. 2). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the invention of the cited prior art with the features of Sehr. One of ordinary skill in the art would have been motivated to do so as Sehr teaches “sealing elements, serve in particular on motor vehicles for sealing, damping, gap-filling and similar” (Abstract)
Claim 20: The cited prior art teaches the limitations of claim 19 as noted above. Sehr further the return tube, wherein the coupling protrusion has a cutout portion (cutout) at a center of the insertion support portion and the outer support portion (Annotated Fig. 2).
Response to Arguments
Applicant's arguments filed 6/2/2026 have been fully considered but they are not persuasive. Applicant has amended claims 1 and 12 to include the limitation of claim 6 and argues on page 8-9 of the remarks on why the initial rejection of claim 6 was incorrect. Applicant points out that Kaneko claims the elastic member is on opposite sides of the bearing in order to support the axial movement of the bearing, is correct but the actual claimed language applicant uses says the elastic material “is disposed between the coupling surfaces of the first and second body portions of the return tube”. The phrase of being between the coupling surfaces of the first and second body portions is can be interpreted under the broadest reasonable interpretation and does not exclude the elastic material supporting the axial movement of the bearing. Kaneko teaches that the elastic members are “located between the bearing and the walls” which would still work for its intended purpose. If claimed language was clarified to focus more on why a specific location is needed for the elastic member, the claims may overcome Kaneko but further search and consideration would be necessary. Respectfully, examiner believes that the arguments are interpreting the claims more narrowly than the breadth of the claims affords.
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.
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/A.R.C./Examiner, Art Unit 3618
/MINNAH L SEOH/Supervisory Patent Examiner, Art Unit 3618
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