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 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 7-8, 10-12 and 14-18 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 7 includes the new limitation: “the housing is configured such that, in a region in a rotational axis direction of the gear, the outer surface of the housing is bathed in the liquid including an entire width of the gear.” There is no disclosure in the original specification or drawings that supports the assertion that the entire width of the gear is bathed in liquid. In fact, there is no mention of any width of the gear in the entire original specification. As can be seen in Figures 8 and 12, the liquid (Lq) is contained in the covering portion (93) that partially covers the outer surface of the housing (HS). Furthermore, paragraph [0118] states: “When the liquid Lq retaining in the box 93 reaches a height of the discharge port 93b, the liquid Lq is discharged to the drainage pipe 98B through the discharge port 93b.” As seen in Figure 8, the portion of the housing covering the entire width of the gear (3) has an inclined surface that extends beyond an entry point of the discharge port (93b) and so liquid in this box (93) would never fully bathe the outer surface of the housing (HS) corresponding to the width of the gear. The liquid would at best bathe a portion of the housing (HS) that corresponds to a partial width of the gear prior to being discharged from the discharge port. It is also noted that there is no indication that these drawings are drawn to scale and so it cannot be full ascertained how much of the outer surface of the housing is bathed in liquid and how it corresponds to the width of the gear. It is also noted that there is no clear indication in the specification of a single gear and instead the specification refers to a transmission mechanism (3, see paragraph [0027]) comprising a planetary reduction gear 4 (reduction gear mechanism, planetary gear mechanism), a differential mechanism 5 (differential gear mechanism), and drive shafts DA and DB as output shafts. Therefore, the claim does not clearly define which gear width is being referred to herein (i.e., is it the width of the entire transmission mechanism 3 or the width of the planetary gear 4 or the width of the differential gear 5).
Due to these reasons, this limitation contains new matter. Claims 8, 10-12 and 14-18 are also rejected as they depend on a rejected claim.
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 7-8, 10-12 and 14-18 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.
Claim 7 includes the new limitation: “the housing is configured such that, in a region in a rotational axis direction of the gear, the outer surface of the housing is bathed in the liquid including an entire width of the gear.” It is unclear how the liquid in the covering can bathe the entire width of the gear. Furthermore, it is not known which gear is being referred to herein since there are multiple gears (i.e., is it the width of the entire transmission mechanism 3 or the width of the planetary gear 4 or the width of the differential gear 5). Also, as seen in Figure 8, the portion of the housing covering the entire width of the gear (3) has an inclined surface that extends beyond an entry point of the discharge port (93b) and so liquid in this box (93) would never fully bathe the outer surface of the housing (HS) corresponding to the width of the gear. The liquid would at best bathe a portion of the housing (HS) that corresponds to a partial width of the gear prior to being discharged from the discharge port.
For the purposes of examination, this limitation will be interpreted as follows: “the housing is configured such that, in a region in a rotational axis direction of the gear, the outer surface of the housing corresponding to the entire width of the gear, is bathed in the liquid
Claims 8, 10-12 and 14-18 are also rejected as they depend on a rejected claim.
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) 7, 10 and 16-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over 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, 7) 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 (any outer surface of 23, 8 or 7) 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 portion 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), and bathes the outer surface of the housing in the liquid (as seen in Figure 1, at 31a, 31b, 29 and 7c, the liquid bathes some portions of the outer surface of the housing), the housing (at housing portion 23) is configured such that, in a region in a rotational axis direction (i.e., axis formed in the up-down direction as oriented on the page containing Figure 1) of the gear (for instance the gear portion 13a), the outer surface (outer surface corresponding to 31a in Figure 1) of the housing corresponding to the width of the gear (i.e., corresponding to the width of gear portion 13a) is bathed in the liquid (at 31a, the outer surface of the housing portion 23 is bathed in liquid as seen in Figure 1 and this corresponds to the width of the gear portion 13a).Nakajima fails to disclose that the outer surface of the housing corresponding to the entire width of the gear is bathed in the liquid.It would have been an obvious matter of design choice to increase the width of the channel (outlet 31a) bathing the outer surface of the housing in liquid, to overlap the outer surface of the housing that corresponds to the entire width of the gear (i.e., width of gear portion 13a or gears 10 or 11), since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
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 16: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.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(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 used 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) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nakajima et al. (herein Nakajima) (US 2004/0163409) as evidenced by Tullis et al. (herein Tullis) (US 2022/0258453).Nakajima is silent regarding the materials used to make the covering.However, Tullis discloses a thermal shielding cover (10) comprising a polymeric core (16). In paragraph [0010] Tullis states: “an amount of any metal particles (e.g., metal fibers or other metal particles) in the polymeric core layer is sufficiently low so that the thermal conductivity of the polymeric core layer is about 2.0 W/mK or less (preferably about 1.00 W/mK or less, and more preferably about 0.80 W/mK);…. the potential energy includes an oriented polymer and/or a compressed rubber in the core layer;--.”
This indicates that Tullis teaches a covering formed of a material in which particles containing metal (metal particles in polymeric core) are mixed with an organic material (compressed rubber in polymeric core). Hence, based on Tullis’ teachings it can be seen that coverings for thermal shielding can be formed from a material containing metal particles mixed with an organic material. Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to make Nakajima’s covering (30) from a material in which particles containing metal are mixed with an organic material (suitable material for thermal shielding as evidenced by Tullis), 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.
Response to Arguments
Applicant's arguments with respect to the pending claims have been considered but are moot because the arguments do not apply to any of the new grounds of rejection being used in the current office action.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Essama Omgba can be reached at 469-295-9278. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DOMINICK L PLAKKOOTTAM/Primary Examiner, Art Unit 3746
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