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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Claims 1-5, 7-10, and 18 are 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(s) 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 requires, “-anchoring a gearwheel on the force transmission element in a rotationally fixed manner by engaging the ribs of the positioning and fastening device with a recess in the gearwheel to form a non-splined, rotationally fixed anchoring.”
Applicant’s originally filed specification lacks support for the term “non-splined, rotationally fixed anchoring” which are newly amended in the claimed filed 4 November 2025. Applicant’s remarks filed 4 November 2025 lack any discussion of the support for the amendments.
Applicant’s Figures 1 and 3 are shown below:
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The claimed “ribs” are illustrated as items 26 which are shown in Fig 3 to anchor the claimed gearwheel (30).
Applicant contends that ribs 26 form a “non-splined, rotationally fixed anchoring.” However, the connection between ribs 26 and a corresponding surface on the interior of gearwheel 30 is, in fact, a splined connection. As evidence, Examiner provides Seger (NPL U: “Inside Splines”, 2005). Seger provides a definition of “Spline” according to the American Heritage Dictionary of the English Language (fourth edition, 2000): Noun: 1a. Any of a series of projections on a shaft that fit into slots on a corresponding shaft, enabling both to rotate together.” Seger then includes further limitations: “Splines transfer the rotary motion of an input to an output through a mechanical connection, or splined shaft. A splined shaft is one that (usually) has equally spaced teeth around the circumference, which are most often parallel to the shaft’s axis of rotation.”
Examiner asserts that in view of the definition of “spline,” the configuration described by Applicant between the transmission element 20 (shaft) and the gearwheel (30) is indeed a splined connection, contrary to the claimed “non-splined ... anchoring.” The inventive connection meets all of the features of the defined “spline” including a “shaft” (transmission element 20), “a series of projections” (ribs 26) which are “(usually) equally spaced around the circumference” (as illustrated in Fig 1) and “which are ... parallel to the shaft’s axis of rotation” (as illustrated in Fig 1). A splined connection is further defined such that the ribs must fit into “slots on a corresponding shaft.”
The “corresponding shaft” at issue is the gearwheel 30. Applicant’s paragraph [0037] teaches, “the shaft receiving opening of the gearwheel 30 has at least one recess and/or at least one projection, which correspond to the at least one rib 26 and/or the at least one notch 23, so that a positioning and fastening device 28 is formed by latching elements on the gearwheel 30 and the force transmission element 20, which latching elements are prefabricated with complementary forms.” This is noted to be a variant. The other variant is described at [0036]: “during the pushing-on procedure, the at least one rib 26 of the positioning and fastening device 28 acts in a cutting, abrasive, elastically deforming and/or plastically deforming manner in the shaft receiving opening of the gear wheel 30, so that rotationally fixed and/or axially fixed anchoring is realized after the pushing-on procedure.”
Thus, whether the “complimentary form” is created before or during the pushing-on procedure, the gearwheel 30 is a corresponding shaft having slots into which the ribs 26 fit. The connection between ribs 26 and gearwheel 30 is a splined connection, not a “non-splined ... anchoring.”
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.
Claims 11-12, 14-17, and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Nagel et al. (US 2023/0070222) in view of Boehm (DE 102022205407 A1).
As to claim 11, Nagel teaches a gear shaft (drive shaft 3) for an electromechanical brake booster (electromechanical brake pressure generator 2), comprising a force transmission element (drive shaft 3) having a gearing end for tapping off a drive torque (the bottom end as shown in the configuration of Fig 1) and a gearwheel (pinion 11) for imparting an output torque (the pinon is capable of outputting torque).
While Nagel teaches a drive shaft 3, pinon 11 and motor 4, Nagel does not go into detail pertaining to the way in which the drive shaft is connected to the rotor and pinon. However, by virtue of transmitting rotational force, the drive shaft 3 must be connected to the rotor of the electric motor 4 at an input side and connected to the pinon 11 at an output side. One well known, widely used, and well understood way of connecting components for the transmission of torque from one to the next is by a splined connection. See Boehm which teaches a shaft 27 (Fig 2) having input and output sections 30 and 35 each being a toothed, or splined connection. As shown in Fig 1, the shaft 27 transmits torque between gears 33 and 52.
Thus, it would have been obvious to a person having ordinary skill in the art at the time the invention was effectively filed to have provided the shaft of Nagel with splined connections at the rotor and pinon. Such a person would have been motivated to do so in order to reliably transmit rotational force from the electric motor, through the shaft, and into the pinion.
Thus Nagel in view of Boehm teaches: wherein the gear shaft (drive shaft 3) comprises a positioning and fastening device (the external toothings 31 of Boehm) for the gearwheel (pinion 11), which positioning and fastening device is formed in one piece with the force transmission element on a portion of the force transmission element and includes at least one rib (as illustrated in Boehm, the toothings 31, 39 are comprised of parallel splines, each spline is considered one “rib.”).
Nagel in view of Boehm further teaches wherein a gearing is integrally formed on the gearing end (as shown in Boehm Fig 2, the toothings 31 and the toothings 39 are integrally formed with the shaft. The toothings 39 are analogous to the claimed “gearing end.”)
As to claim 12, Nagel in view of Boehm teaches the gear shaft according to claim 11, wherein the gear shaft comprises two bearing portions, with which a radial bearing is in engagement in each case (as shown in Fig 1 of Nagel, there are radial bearings at the top, just above, and just below the motor 4).
As to claim 14, Nagel in view of Boehm teaches the gear shaft according to claim 11, wherein the positioning and fastening device has a lateral surface elevation and/or depression in the force transmission element (the teeth toothings 31, 39 of Boehm are raised above the surface of the shaft 27).
As to claim 15, Nagel in view of Boehm teaches the gear shaft according to claim 11, but does not teach the force transmission element has an axial bearing end opposite the gearing end for tapping off a drive torque, which axial bearing end is formed in one piece with the force transmission element or has a fastening aid in which a component forming an axial bearing contact is received.
Rather, the axial bearing (screw, see [0017-0018]) is at the input-side end of the drive shaft. However, choosing the place the screw at an input-side end or an output-side end appears to be an engineering choice between merely two options. Since the drive shaft has only two axial ends, an axial bearing must be at one end or the other.
See MPEP § 2143 E which describes the prima facie obvious of "Obvious to try" - choosing from a finite number of identified predictable solutions, with a reasonable expectation of success. In this case, there appears to be an expectation of success for the screw at either the output or input sides since either would function the same way for reducing axial movement of the drive shaft 3.
Thus, an axial bearing opposite the gearing on the drive-side of the drive shaft is obviated. Examiner notes that the structure as claimed, wherein the axial bearing has a recess formed in the force transmission element is met by Nagel’s illustrated hole tapped for the screw to enter. The claimed axial bearing contact fastened in the recess is met by the screw itself.
As to claim 16, Nagel in view of Boehm teaches the gear shaft according to claim 11 wherein the positioning and fastening device forms an anchoring between the gear wheel and the force transmission element, which anchoring is fixed against rotation and/or axial thrust (the toothing of gearing 31, 35 of Boehm is located between the shaft and the gears which sit on the shaft. The toothing is an anchoring which fixes the gear against rotation relative to the shaft. That is, the shaft and the gear rotate together because of the splined connection.).
As to claim 17, Nagel in view of Boehm teaches an electromechanical brake booster (electromechanical brake pressure generator 2), comprising an electric motor (electric motor 4) and having a rotation/translation conversion gear, which converts a rotating drive movement of the electric motor into a linear movement for actuating a piston-cylinder unit for generating a hydraulic brake pressure, wherein the rotation/translation conversion gear comprises a gear shaft according to claim 11 ([0026]: “Drive shaft 3 is connected to a pinion 11 that meshes with a gearwheel 12 of the spindle drive unit 1, so that the rotational motion of drive shaft 3 is transferable to spindle drive unit 1. To convert the rotational motion of drive shaft 3 into a translational motion of piston 5, spindle drive unit 1 includes a spindle 14 and a spindle nut 15, which in the illustrated exemplary embodiment are accommodated in hollow cylindrical piston 5.”).
As to claim 19, Nagel in view of Boehm teaches the gear shaft according to claim 12, wherein the gear shaft has a removable and/or separately manufactured axial positioning device (screw) for fixing a position of the gear shaft in the electromechanical brake booster with respect to a drive side (see Nagel [0018] and [0019] which discuss the screw axially fixing the drive shaft 3), wherein, a fastening aid for the axial positioning device is provided (the tapped hole into which the screw is threaded), which fastening aid is formed in one piece with the force transmission element (as illustrated in Fig 1 of Nagel the drive shaft 3 has a hole integrally formed for a screw).
As to claim 20, Nagel in view of Boehm teaches the gear shaft according to claim 12, wherein the positioning and fastening device has a lateral surface elevation and/or depression in the force transmission element (the toothings 31, 39 of Boehm are raised above the surface of the shaft 27).
Allowable Subject Matter
Claim 13 is 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.
Claim 13 requires a “removable and/or separately manufactured axial positioning device” and “a fastening aid for the axial positioning device is provided” and “[the] fastening aid is formed in one piece on an outside surface with the force transmission element.”
Examiner’s best art does not teach or obviate such a device. Rather, Nagel teaches a screw, but the corresponding screw threads are not on “an outside surface” of the claimed gear shaft. Applicant’s arguments with respect to claim 13 are convincing.
Response to Arguments
Applicant's arguments filed 4 November 2025 with respect to claims 11-12, and 14-17, and 19-20 have been fully considered but they are not persuasive.
Applicant’s arguments pertaining to claim 11 are found in section C on pages 8-9. Applicant argues “’The at least one rib’ language further distinguishes the claimed device from generic splines or toothings, as the rib structure is a structural feature designed for both positioning and anchoring the gearwheel.”
This appears to be the major source of disagreement regarding the interpretation of the claims and the art. Applicant asserts that the claimed ‘at least one rib’ is not a splined connection, whereas Examiner asserts the broadest reasonable interpretation of the claim is met by a splined connection, which Examiner asserts is taught by Nagel in view of Boehm. Examiner’s interpretation of “splined connection” is described in detail in the 112(a) rejection above. Claim 11 requires “a positioning and fastening device” which is ”formed in one piece” and “includes at least one rib.” The splined connection of Boehm meets all of these limitations. Applicant’s argument appears to be that a spline connection cannot have “at least one rib.” This is false as “ribs” are projections which are equally spaced and extend along the axis of the shaft, and which fit into slots on a corresponding shaft. Thus Applicant’s claimed “ribs” are a splined connection.
If the Applicants believe the structure of the inventive gear shaft is different from the structure of Nagel in view of Boehm, they are encouraged to claim it.
Applicant’s arguments with respect to claim 11 regarding the manufacturing process are moot as claim 11 is directed to a product, not a method.
Applicant erroneously argues that the Examiner has provided no motivation to combine the cited references. This is rendered false by reading paragraphs 17 and 18 of the Action above.
Applicant argues, “The Examiner’s analysis treats splined connections and external toothings as equivalent to the claimed arrangement, but the application describes a more complex and functionally distinct structure.” Examiner continues to assert the claimed structures are met by the prior art’s splined connections. Applicant is encouraged to claim the features of the invention which are distinct from splined connections.
Applicant’s arguments against the rejection of claim 14 are not convincing. Applicant has provided no evidence that the lateral surface elevation and/or depression in the force transmission element is distinct from the spline of Boehm. Splines are defined as a “series of projections” which fit into “slots in a corresponding shaft.” A “series of projections” inherently creates alternating “elevated” and “depressed” regions.
Applicant’s arguments against claim 15 are not convincing. Applicant reduces the rejection to “engineering choice” while ignoring the fact pattern laid out that the engineering choice is between one of two options; that is, between a top orientation or a bottom orientation. Examiner then points to MPEP § 2143 E which provides the legal rationale that choosing from a finite number of identified predictable solutions, with a reasonable expectation of success is considered prima facie obvious.
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 JACOB JAMES CIGNA whose telephone number is (571)270-5262. The examiner can normally be reached 9am-5pm Monday-Friday.
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/JACOB J CIGNA/
Primary Examiner, Art Unit 3726 22 January 2026