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 Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(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 3-8 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
In Re claim 3, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation “between 26.5 degrees and 29.5 degrees”, and the claim also recites “preferably 27 degrees, and in particular 28 degrees” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
In Re claim 4, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “between 1.2mm and 1.3mm”, and the claim also recites “in particular 1.25mm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 5-8 all recite the same broad limitation followed by a narrower limitation; and are therefore all considered indefinite. See above rejections and MPEP § 2173.05(c).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim (WO 2021/045412 A1). The examiner notes that US 2022/0297657 is reference herein as an English translation equivalent.
In Re claim 1, Kim discloses an electric parking brake (see 110 and 120) comprising: a spindle (121) with an external thread (figs. 2-4); and a spindle nut (130) with an internal thread (figs. 5-7) in engagement with the external thread, wherein the external thread and internal thread have a symmetrical thread profile with a rounded portion in the crest and trough of the profile (see figs. 4 and 6).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2 are rejected under 35 U.S.C. 103 as being unpatentable over Kim (WO 2021/045412 A1).
In Re claims 2-9, Kim discloses the claimed electric parking brake actuator with a spindle and spindle nut each having a rounded thread profile/shape, but fails to specifically disclose the dimensions or said rounded thread profiles/shapes. However, the examiner asserts that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have formed the co-mating threads of the spindle and spindle nut to have any profile/shape, including: a rounded portion radius between 0.23mm and 0.27mm; a thread flank angle between 26.5 degrees and 29.5 degrees; a pitch between 1.2mm and 1.3mm; a diameter between 8.3mm and 8.4mm; a core diameter between 6.35mm and 6.95mm, a flank diameter between 7.5mm and 7.9mm, and a flank width of 0.62mm and 0.63mm, as a matter of engineering design choice based on the operating conditions to provide a strong product while minimizing excess material and meeting sizing and packaging constraints, while also providing smooth and optimal performance.
The examiner notes that it has been held that a modification involving a mere change in size of a component is generally recognized as being within the level of ordinary skill in the art (MPEP 2144.04). The examiner further notes that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art (MPEP 2144.05).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Kim (WO 2021/045412 A1) as applied to claim 1 above, and further in view of Peric (US 2023/0003270).
In Re claim 9, Kim discloses the claimed invention, with the exception of teaching a rolling and heat treating method steps.
Peric is related to the art of automotive parking brake actuators. Peric teaches forming a spindle (11) and spindle nut (20) for a parking brake device (Abstract), and forming the spindle and nut threads (13, 23) via a thread rolling and heat treatment process (par. 0017). Thread rolling and heat treating creates stronger, more fatigue-resistant threads, with improved tensile strength and grain structure, by introducing beneficial compressive residual stresses into the thread roots, significantly improving performance over cut threads. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the spindle and spindle nut threads of Kim to be formed by a rolling and heat treatment process, as taught by Peric, to produce stronger, more robust threads, enabling a longer service life expectancy, and allowing for greater force application during use.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS W IRVIN whose telephone number is (571)270-3095. The examiner can normally be reached Monday - Friday 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi can be reached at 571-272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS W IRVIN/ Primary Examiner, Art Unit 3616