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 § 102
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.
Claim(s) 7, 10 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakajima et al. (herein Nakajima) (US 2004/0163409). Regarding Claim 7:In Figures 1-3 and the specification, Nakajima discloses a vehicle (electric vehicle, see abstract) comprising: a motor (60); a gear (multiple gears in 70) connected to the motor (as seen in Figure 1); a housing (23, 8) having a gear chamber (chamber within 23) that accommodates an oil and the gear (see paragraphs [0030]-[0032]); a covering (covering formed by 30) having a portion that covers the housing (portion of 30 radially covers 23 as seen in Figure 1); and a liquid (cooling water from radiator 35 that enters port 31a within the covering 30, see Figure 1) interposed between an inner surface of the covering and an outer surface of the housing (as seen in Figure 1, liquid in the conduit axially upwards from 31a and including 31a, is interposed between an inner surface of the covering 30 and an outer surface of the housing 23), wherein the liquid has a portion (portion within 31a) that overlaps the oil in the gear chamber when viewed in a radial direction (as seen in Figure 1, in the radial direction the liquid in 31a and the conduit in the upward direction from 31a, overlaps any oil that would lubricate gears 11, 12).
Regarding Claim 10:In Figures 1-3 and the specification, Nakajima discloses the vehicle, further comprising: an electrical component (inverter 50) fixed to the outer surface of the housing (via bracket 7), wherein the electrical component (50) includes a portion (connector 27) offset from the covering (30) when viewed in a radial direction (as seen in Figure 1, 27 is offset from 30 in the radial direction).Regarding Claim 17:In Figures 1-3 and the specification, Nakajima discloses the vehicle, wherein the covering has a porous structure (the covering 30 has ports that allow for passage of fluid thereby forming a porous structure).
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.
Claim(s) 8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (herein Nakajima) (US 2004/0163409) in view of Minato (JP 2019030131). Regarding Claim 8:Nakajima fails to disclose that the liquid is a fuel cell drainage (per claims 8 and 9). However, Minato discloses a system in Figure 4 wherein in a motor cooling system (26), water generated by a fuel cell (16) is used to cool a motor (20). Hence, Minato proves that fuel cell drainage (water generated from a fuel cell) is a suitable coolant for a motor. Hence, based on the evidence provided by Minato, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have used water generated by a fuel cell (i.e., fuel cell drainage) instead of Nakajima’s cooling water to cool Nakajima’s motor, since doing so would be obvious to try and would yield the predictable results of reusing a byproduct of a fuel cell and cost savings by reutilizing a liquid.
Note: This claim only describes the type of fluid used to cool the motor, not that the fuel cell itself is connected to the motor. Regarding Claim 11:Nakajima as modified by Minato discloses the vehicle, further comprising: an electrical component (inverter 50) fixed to the outer surface of the housing (via bracket 7), wherein the electrical component (50) includes a portion (connector 27) offset from the covering (30) when viewed in a radial direction (as seen in Figure 1, 27 is offset from 30 in the radial direction).
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (herein Nakajima) (US 2004/0163409) as evidenced by Hoshinoya et al. (herein Hoshinoya) (JP 2021010267) in further view of Oshiro et al. (herein Oshiro) (US 4,558,634). Nakajima is silent regarding the positioning of the housing. However, it is well known in the art that motors with gear transmissions are commonly placed in the rear side of the vehicle in a vehicle room (for instance in rear wheel drive vehicles). For instance, in Figures 1-2, Hoshinoya discloses a similar electric vehicle wherein a drive unit (30, motor with transmission) is placed in a vehicle room on the rear side of the vehicle (as evident from Figures 1-2). Hence, based on common knowledge in the art and Hosinoya’s evidence, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have placed Nakajima’s housing (i.e., housing including the motor and gear) in a vehicle room located on a rear side of the vehicle, since doing so would be obvious to try and would yield predictable results such as attaining the desired weight distribution of the various vehicle components and to provide power to the rear wheels if Nakajima’s motor was used as a rear wheel drive unit. Nakajima as modified also fails to disclose: a ventilation port configured to communicate with a space in which the housing is disposed, in the vehicle room.However, in Figure 2, Oshiro discloses a vehicle wherein one or more ventilation ports (20, 23) are communicated with a space (21) in a rear side vehicle room (trunk room 21), since doing so provides airflow through the vehicle room. Hence, based on Oshiro’s teachings, 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 added vehicle room in Nakajima’s vehicle to further include one or more ventilation ports to cool the vehicle room by allowing air flow therethrough, wherein this airflow would also advantageously cool Nakajima’s motor.
Claim(s) 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (herein Nakajima) (US 2004/0163409) as evidenced by Ewington et al. (herein Ewington) (US 2005/0128752).
Nakajima is silent regarding the materials used to make the covering (per claims 14-15). However, in Figure 2, Ewington discloses a heat exchanger covering (102) made of aluminum (metal material, per claim 15) and also including a thermally conductive rubber (211) (organic material, per claim 14) that enhance thermal heat exchange (see paragraph [0110]). Hence, Ewington establishes that organic materials (such as rubber) and metal materials (such as aluminum) are suitable materials uses to construct at least certain portions of a heat exchanger. It would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to have made Nakajima’s covering (30) from a material containing organic material (per claim 14) and/or a metal material (per claim 15) (based on common knowledge in the art and the evidence provided by Ewington), since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (herein Nakajima) (US 2004/0163409).In Figure 3, Nakajima discloses the vehicle wherein the covering (30) is located at four corners of the housing (see paragraph [0042]). It would have been an obvious matter of design choice to modify the shape of the covering (embodiment shown in Figure 3) to be wound around the housing (such as by interconnecting the portions at the 4 corners), since such a modification would have involved a mere change in the shape of a component. A change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results. In re Dailey et al., 149 USPQ 47. A change in aesthetic (ornamental) design generally will not support patentability. In re Seid, 73 USPQ 431.
Response to Arguments
Applicant's arguments filed 10/28/2025 have been fully considered but they are not persuasive.
With respect to the rejection of claim 7, the applicant has argued: “the heat exchanger 30 of Nakajima is integrally incorporated into the structural member 80. This arrangement of Nakajima is different than the arrangement recited in amended claim 7 where "a liquid interposed between an inner surface of the covering and an outer surface of the housing." Thus, Nakajima does not have all the features of amended claim 7.” It is unclear what exactly the applicant is trying to argue here since an integrally formed heat exchanger does not preclude the liquid from being interposed between the inner surface of the covering and the outer surface of the housing. As stated above in the rejection of claim 7 and as seen clearly in Nakajima’s Figure 1: “as seen in Figure 1, liquid in the conduit axially upwards from 31a and including 31a, is interposed between an inner surface of the covering 30 and an outer surface of the housing 23.” Based on Nakajima’s Figure 1 and Figure 3, it can be seen that a liquid is interposed in conduits formed between the inner surface of the covering (30) and the outer surface of the housing (outer surface of 8 in Figure 3 or outer surface of 8 and 23 in Figure 1). It is further noted that in the instant application, a similar arrangement of a conduit (box 93) carrying liquid (Lq) is shown in Figure 8, wherein the liquid (Lq) is interposed between an inner surface of the covering (90) and the outer surface of the housing (Hs). It is also noted that the instant claim does not state that the covering is separably or detachably formed from the housing and so there is no claim limitation that states that these two elements have to be separable and so they can be integrally formed as taught by Nakajima. Nakajima’s heat exchanger (30) still serves as a covering even if it is integrally formed with a housing portion (80).
Due to these reasons, this argument is not persuasive. The remaining arguments are all directed to the argument presented above and so are also unpersuasive for the same reasons.
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 DOMINICK L PLAKKOOTTAM whose telephone number is (571)270-7571. The examiner can normally be reached Monday - Friday 12 pm -8 pm ET.
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/DOMINICK L PLAKKOOTTAM/Primary Examiner, Art Unit 3746