Prosecution Insights
Last updated: April 19, 2026
Application No. 18/429,578

ELECTRIC ACTUATOR AND METHOD FOR MANUFACTURING THE SAME

Non-Final OA §103
Filed
Feb 01, 2024
Examiner
DESAI, NAISHADH N
Art Unit
2834
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Mitsui Kinzoku Act Corporation
OA Round
1 (Non-Final)
82%
Grant Probability
Favorable
1-2
OA Rounds
2y 7m
To Grant
91%
With Interview

Examiner Intelligence

Grants 82% — above average
82%
Career Allow Rate
893 granted / 1091 resolved
+13.9% vs TC avg
Moderate +9% lift
Without
With
+8.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 7m
Avg Prosecution
28 currently pending
Career history
1119
Total Applications
across all art units

Statute-Specific Performance

§101
0.6%
-39.4% vs TC avg
§103
54.8%
+14.8% vs TC avg
§102
28.9%
-11.1% vs TC avg
§112
14.2%
-25.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1091 resolved cases

Office Action

§103
DETAILED ACTION Notice of Pre-AIA or AIA Status The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Priority Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Information Disclosure Statement The information disclosure statement (IDS) submitted on 02/01/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Claim Rejections - 35 USC § 103 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. Claim(s) 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Beyerl (US 9787159). Regarding claim 1, Beyerl discloses: An electric actuator (abstract), comprising: an electric brushless motor (abstract, C1 ll 18-32) having a rotor and a stator (not labeled, but implicitly by numerals 126,149, Fig 3A); and a control board (202, Fig 8A-C) that has a plurality of electric components and that controls operation of said brushless motor (C5 ll 58-C6 line 20), wherein: said control board (202) comprises a main board (by 209,210, Fig 8A) and a small board (142 – by numeral 202, Fig 8A) that has a smaller planar shape (read as axial width parallel to shaft 158) than said main board and that is connected to said main board via a connecting member (212, Fig 8A, C6 ll 3-20), and said small board (142) has one or more of said electric components (C6 ll 6-7), faces said rotor (not labeled, but by numerals 142, 126, 146 in Fig 3A), and is arranged at a position closer to said rotor than said main board (202, Figs 3A, 6,7, 8A-C – since 202 sits lower than PCB 142) in a rotation axis (shaft 158, Figs 3B, 6,7) direction of said rotor. Beyerl discloses the invention as discussed above, but in different embodiments. However, as skilled artisan would readily recognize the benefits of combining the teachings of Beyerl to make applicant’s currently claimed invention as discussed above, since it would be based on cost, reduced wiring and assembly complexity and size. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing of the invention to combine the teachings of Beyerl to make applicants currently claimed invention. The motivation to do so would be based on desired functionality, cost, reduced wiring and assembly complexity and size (C5 ll 52-67, C6 ll C7 ll 63- C8 line 5, 20-29). Regarding claim 2/1, Beyerl discloses wherein said electric components included in said small board include a magnetic sensor that detects a magnet of said rotor (C4 ll 27-40). Regarding claim 3/1, Beyerl discloses wherein said small board (142 – by 202, Fig 8A) overlies a part of said main board (202 by 209,210) when viewed in said rotation axis direction. Regarding claim 7/1, Beyerl discloses wherein said main board (202 by 209,210) has an electronic control unit at a position that does not overlap with said small board (142) when viewed in said rotation axis direction (Fig 8A). Claim(s) 6 are rejected under 35 U.S.C. 103 as being unpatentable over Beyerl (US 9787159) in view of Mergener et al. (US 20130313925). Regarding claim 6/1, Beyerl discloses the invention as discussed above, except wherein said small board is fixed to said main board by a screw (although Beverl teaches the use of screws in C9 ll 37-44 for the purpose to secure components). Mergener et al. teaches to attach two PCB’s together using screws (para 60). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing of the invention to modify Beyerl wherein said small board is fixed to said main board by a screw, as Mergener et al. teaches. The motivation to do so would allow one to secure both PCB’s simultaneously and simplify assemblage (para 60 of Mergener et al.). Claim(s) 8,9 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Beyerl (US 9787159) in view of Fukushima et al. (JP H11275835). Regarding claim 8, Beyerl discloses: A method for manufacturing an electric actuator (Figs 3-9), comprising steps of: installing 126, Figs 3-9) an electric brushless motor (abstract, C1 ll 18-32) having a rotor and a stator stator (not labeled, but implicitly by numerals 126,149, Fig 3A); cutting a board material (Figs 8A-C shows 202,209,210,142 cut) which has a plurality of electrical components (C5 ll 58-C6 line 20) to separate said board material into a main board (by 209,210, Fig 8A) and a small board that has a smaller planar shape than said main board (142 – by numeral 202, Fig 8A) and that has one or more of said electrical components; arranging said small board (142) at a position that faces said rotor (not labeled, but by numerals 142, 126, 146 in Fig 3A) and that is closer to said rotor than said main board (202, Figs 3A, 6,7, 8A-C – since 202 sits lower than PCB 142) in said rotation axis (shaft 158, Figs 3B, 6,7) direction of said rotor; and connecting said small board (142) to said main board (202) by a connecting member (212, Fig 8A, C6 ll 3-20). Beyerl discloses the invention as discussed above, but in different embodiments. However, as skilled artisan would readily recognize the benefits of combining the teachings of Beyerl to make applicant’s currently claimed invention as discussed above, since it would be based on cost, reduced wiring and assembly complexity and size. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing of the invention to combine the teachings of Beyerl to make applicants currently claimed invention (except cutting the board). The motivation to do so would be based on desired functionality, cost, reduced wiring and assembly complexity and size (C5 ll 52-67, C6 ll C7 ll 63- C8 line 5, 20-29). Beyerl does not explicitly teach the cutting of a board material into a main and a small board. Fukushima et al. teaches to split a printed circuit board into halves (para 48). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing of the invention to modify Beyerl by cutting a board material into pieces, as taught by Fukushima et al. The motivation to do so would permit one to provide two stators (para 50 of Fukushima et al.). Regarding claim 9/8, Beyerl discloses wherein said electric components included on said small board include a magnetic sensor that detects a magnet of said rotor (C4 ll 27-40), and said small board (142 – by 202, Fig 8A) is arranged such that said magnetic sensor faces said magnet (implicit in order for the hall sensors 128 to function as disclosed). Regarding claim 14/8, Beyerl in view of Fukushima et al. discloses the claimed invention except wherein said main board has an electronic control unit, and said small board is arranged so as not to overlie said electronic control unit when viewed in said rotation axis direction. It would have been obvious to one having ordinary skill in the art before the effective filing of the invention to arrange the main board and the small board so as not to overlie said electronic control unit when viewed in said rotation axis direction, since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japiske, 86 USPQ 70. The motivation to do so would depend on desired cooling (C8 35-40 of Beyerl) available space, ease of assemblage / repair. Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Beyerl (US 9787159) in view of Fukushima et al. (JP H11275835), further in view of Mergener et al. (US 20130313925). Regarding claim 13/8, Beyerl in view of Fukushima et al. discloses the invention as discussed above, except wherein said small board is fixed to said main board by a screw, and the distance between said small board and said rotor is adjusted by said screw (although Beverl teaches the use of screws in C9 ll 37-44 for the purpose to secure components). Mergener et al. teaches to attach two PCB’s together using screws (para 60). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing of the invention to modify Beyerl in view of Fukushima et al. wherein said small board is fixed to said main board by a screw, as Mergener et al. teaches and to have the distance between said small board and said rotor is adjusted by said screw, since it would depend on available space and desired tightness/securing of the components. The motivation to do so would allow one to secure both PCB’s simultaneously and simplify assemblage (para 60 of Mergener et al.) and depend on available space and desired tightness/securing of the components. Allowable Subject Matter Claims 4-5,10-12 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: In claim 4/3 inter alia, the specific limitations of “…wherein said main board has a convex portion that protrudes toward said rotor when viewed in said rotation axis direction, and said small board overlies said convex portion when viewed in said rotation axis direction.”, in the combination as claimed are neither anticipated nor made obvious over the prior art made of record. Claim 5/4 is also allowable for depending on claim 4. In claim 10/8 inter alia, the specific limitations of “…wherein said small board is arranged to partially overlie said main board when viewed in said rotation axis direction.”, in the combination as claimed are neither anticipated nor made obvious over the prior art made of record. In claim 11/8 inter alia, the specific limitations of “…wherein said main board has a convex portion that protrudes toward said rotor when viewed in said rotation axis direction, and a protruding portion that is to become said small board is formed as one unit with said board material at a position adjacent to a portion that is to become said convex portion of said main board, and said protruding portion is cut from said board material to separate said small board and said main board.”, in the combination as claimed are neither anticipated nor made obvious over the prior art made of record. Claim 12/11 is also allowable for depending on claim 11. 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 The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see PTO-892 for details. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAISHADH N DESAI whose telephone number is (571)270-3038. The examiner can normally be reached 9-5. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Christopher M Koehler can be reached at 571-272-3560. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. NAISHADH N. DESAI Primary Examiner Art Unit 2834 /NAISHADH N DESAI/Primary Examiner, Art Unit 2834
Read full office action

Prosecution Timeline

Feb 01, 2024
Application Filed
Jan 06, 2026
Non-Final Rejection — §103 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
82%
Grant Probability
91%
With Interview (+8.7%)
2y 7m
Median Time to Grant
Low
PTA Risk
Based on 1091 resolved cases by this examiner. Grant probability derived from career allow rate.

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