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 .
Status of Claims
This office action is in response to the amendments/remarks filed on 9/30/2025. Claims 1-4, 6-10 are pending; claims 1, 6, 8-10 have been amended; claim 5 is canceled.
Response to Arguments/Amendment
The previous objection to the drawings have been withdrawn in light of the amendment to claim 1; amendment to the specification and replacement to fig.1.
The previous claims objection have been withdrawn in light of the amendment to the claims.
The previous rejections of claims 3-4 under 35 USC 112 (a) and (b) have been considered but are not persuasive for the following reasons:
--Applicant argued that Fig.1 was amended so that “ the piston 5 moves to the right side (to where it is shown in Fig. 1) and (by means of pull rod 13) pulls the auxiliary clutch disc 15 with the wave pad also to the right side away from the friction plate”.
This contradicts with the originally disclosure because the original specification only teaches a piston pushes (compressive actuation) not pulling. The original specification does not have any disclosure of a piston connected to any structure capable of transmitting a pulling force. The original specification describes air pressure pushing a piston forward, which is standard pneumatic clutch engagement mechanism. A piston that pulls a clutch component requires a different mechanical linkage such as hook for pulling forces which are not disclosed in original specification.
The previous rejections of claims 1-2, 5-10 under 35 USC 112 (b) have been withdrawn in light of the amendment to claim 1 and canceling claim 5.
Applicant’s arguments, with respect to the rejections of claims 1-2, 5 under 35 USC 103 have been considered but are not persuasive for the following reasons:
1-Applicant argued “Feature 1.1:"the emergency steering pump includes a pneumatic clutch" The clutch of the embodiment disclosed in MAZUR is a hydraulic clutch, as is indicated for example in the first sentence of the second paragraph in column 2 of MAZUR: "Die fur die Erfindung wichtigen Teile sind insbesondere die Hilfspumpe 18, ihre hydraulisch gesteuerte Kupplung19 [...]". As the clutch known from MAZUR is a hydraulic controlled clutch (as noted by the Examiner), an emergency steering pump including a pneumatic clutch according to feature 1.1 is not known from MAZUR.”.
In response to this argument, primary reference by Mazur discloses the emergency steering pump architecture and clutch arrangement and examiner stated that Mazur discloses a hydraulic clutch. Secondary reference by Hemmingsen explicitly teaches replacing hydraulic actuation with pneumatic actuation. Substitution of one known actuator type for another is predictable design choice yielding predictable result. Thus, feature 1.1 remains obvious over Mazur in view of Hemmingsen.
2-Applicant argued “Feature 1.2:"the emergency steering pump includes a variable displacement pump" MAZUR refers to a "Noteinsatzpumpe" and there is no indication that the pump known from MAZUR is a variable displacement pump. Since MAZUR was published in 1956, it is very likely that it does not include a variable displacement pump. As a result, also feature 1.2 is not known from the disclosure of MAZUR.”
In response to this argument, examiner respectfully disagrees Mazur discloses auxiliary pump 18 which automatically changes its delivered flow depending on hydraulic pressure condition and controlled by clutch 19, piston 29 and pressure chamber(see Fig.2 and ¶[0005], [0014]-[0015]). This meets the claimed “variable displacement pump” limitation under BRI, since “variable displacement pump” is any pump whose output flows or effective displacement varies as a function of system pressure. The claim does not recite any structural limitation to restrict the pump to modern variable designs. Thus applicant’s argument that Mazur is likely not a variable displacement pump because it is from 1956 is not aligned with the claim scope.
3-Applicant argued “Feature 1.3:"the pneumatic clutch includes a clutch outer transmission shaft and a clutch inner transmission shaft" The emergency steering pump disclosed in MAZUR includes a clutch connected to a transmission shaft mechanism, but after carefully analysing Figs. 2 and 3 of MAZUR, one can not distinguish between an inner and outer transmission shaft. In the context of the present invention, the terms "inner" and "outer" shaft refer to the diameters of the two shafts and to the fact that these are arranged one inside the other in the area of the coupling elements. There is a kind of outer shaft 29 (Kolben") representing an element of the shifter mechanism but this outer shaft does not participate in transmission of torque. However, since there is no explicit inner and outer shaft in MAZUR, feature 1.3 is also not disclosed in MAZUR. “Feature 1.5:"the clutch outer transmission shaft is connected to a gearbox" As already stated with regard to feature 1.3, there is no outer transmission shaft in MAZUR. Kolben 29 represents an element of the shifter mechanism which does not participate in transmission of torque and is not connected to a gearbox. MAZUR discloses a shaft that is connected to a disk 42 ("Mitnehmerscheibe"). This shaft is connected to a gear 24 for receiving torque. Consequently, also feature 1.5 is not known from the disclosure of MAZUR. Feature 1.6:"the clutch inner transmission shaft is connected to a pump shaft" As already stated with regard to feature 1.3, there is no "inner" transmission shaft in MAZUR. Shaft 35 is a pump shaft which is arranged axially outside the clutch. Therefore, also feature 1.6 is not known from the disclosure of MAZUR.”
In response to this argument, examiner did not rely on piston 29 as shaft. Fig.2 of Mazur depicts shaft (43) extends rightward into the geartrain (gears 24-26); shaft 43 transmits torque from transmission side to the clutch. Under BRI, the element 43 is clutch outer transmission shaft. Shaft (36) is a hub shaft located inside the clutch assembly, connected to shaft (35) which drives auxiliary pump (18). The shaft (36) transmits torque from clutch toward the pump. Under BRI, the element 36 is clutch inner transmission shaft. The shafts (43,36) rotate about same axis, connected and disconnected by clutch disks (41,42), form the exact torque path described in the claim. Secondly, the limitation of claim 1 does not require any diameter relationship or one shaft radially inside another or concentric, and anticipation/obviousness does not require identical naming. It requires the structures to be present which they are. Thus Mazur fully disclose the features of 1.3, 1.5 and 1.6 under BRI.
4-Applicant argued “Feature 1.4:"the variable displacement pump is provided with a pump shaft" MAZUR discloses a pump shaft, but it is not connected to a variable displacement pump. Thus, also feature 1.4 is not known from the disclosure of MAZUR.”
In response to this argument, examiner respectfully disagrees Mazur discloses variable displacement pump (auxiliary pump 18 which automatically changes its delivered flow depending on hydraulic pressure condition. This meets the claimed “variable displacement pump” limitation under BRI) is provided with pump shaft (35).
5-Applicant argued “Feature 1.7:"a clutch disc is arranged between the clutch outer transmission shaft and the clutch inner transmission shaft" As already stated in particular with regard to feature 1.3, the terms "inner" and "outer" shaft refer to the diameters of the two shafts and to the fact that these are arranged one inside the other in the area of the coupling elements. This feature further defines, that the clutch disc is radially arranged between the clutch outer transmission shaft and the clutch inner transmission shaft. As the clutch disk of MAZUR is arranged axially between the pump shaft and the "Kolben" 29, also feature 1.7 is not known from MAZUR. Consequently, feature 1.7 is also new with regard to MAZUR.”
In response to this argument, examiner respectfully disagrees the limitation of claim 1 does not require any diameter relationship or one shaft radially inside another or concentric. As discussed above, shaft (43) extends rightward into the geartrain (gears 24-26); shaft 43 transmits torque from transmission side to the clutch. Under BRI, the element 43 is clutch outer transmission shaft. Shaft (36) is a hub shaft located inside the clutch assembly, connected to shaft (35) which drives auxiliary pump (18). The shaft (36) transmits torque from clutch toward the pump. Under BRI, the element 36 is clutch inner transmission shaft; and as shown in Fig.2 of Mazur’s discs (41, 42) is between the clutch outer transmission shaft (43) and the clutch inner transmission shaft (36). Thus feature 1.7 is disclosed by Mazur.
6-Applicant argued “Feature 1.8:"when the pneumatic clutch is not ventilated, the clutch disc is in a combined state, and the clutch outer transmission shaft and the clutch inner transmission shaft are connected in transmission" As MAZUR lacks a pneumatic clutch as well as an outer and an inner transmission shaft, also feature 1.8 is not known from the disclosure of MAZUR.”
In response to this argument, examiner respectfully disagrees Mazur clearly discloses a clutch (19) that is engaged when no actuating pressure is applied (¶[0014]-[0015]), transmitting toque between the clutch outer transmission shaft (43) and clutch inner transmission (36). Hemmingsen explicitly teaches replacing hydraulic actuation with pneumatic actuation. Substitution of one known actuator type for another is predictable design choice yielding predictable result. Thus feature 1.8 remains obvious over Mazur in view of Hemmingsen.
7- Applicant argued “Feature 1.9:"when the pneumatic clutch is ventilated, the clutch disc is in a disengaged state, and the clutch outer transmission shaft and the clutch inner transmission shaft are disconnected" As already stated with regard to feature 1.8, MAZUR lacks a pneumatic clutch as well as an outer and an inner transmission shaft. Hence, also feature 1.9 is not known from the disclosure of MAZUR.”
In response to this argument, examiner respectfully disagrees Mazur discloses a clutch (19) that disengages under pressure (¶0014]), disconnecting toque between the clutch outer transmission shaft (43) and clutch inner transmission (36). Hemmingsen explicitly teaches replacing hydraulic actuation with pneumatic actuation. Substitution of one known actuator type for another is predictable design choice yielding predictable result. Thus feature 1.9 remains obvious over Mazur in view of Hemmingsen.
8-Applicant argued “It is noted that the Examiner relies on Hemmingsen to teach a hydraulic clutch. However, a combination of MAZUR and Hemmingsen does not result in the arrangement and connections of the elements as set forth in the claimed invention. The emergency steering pump as known from MAZUR and Hemmingsen differs in particular in the type and structure of the component parts, namely the pneumatic clutch and the variable displacement pump, as well as their connection to each other, namely in "inner" and "outer" transmission shafts with a clutch disc arranged therebetween.
In response to this argument, examiner respectfully disagrees obviousness does not require the resulting structure to be identical to embodiment described in the application. It requires only that the combined teaching under broadest reasonable interpretation render the claimed subject matter obvious. None of the claims recite “coaxial, concentric shaft, shaft diameter requirements, special clutch architecture, specific arrangement of pump internals”; the claim requires “a clutch inner and outer transmission shaft; clutch disc between the, a pump shaft on variable displacement pump, engaged clutch when unpressurized/disengaged when ventilated”.
As mentioned in feature 1.3 the claim does not recite “coaxial, concentric shaft” Mazur discloses shaft (43) extends rightward into the geartrain (gears 24-26); shaft 43 transmits torque from transmission side to the clutch. Under BRI, the element 43 is clutch outer transmission shaft. Shaft (36) is a hub shaft located inside the clutch assembly, connected to shaft (35) which drives auxiliary pump (18). The shaft (36) transmits torque from clutch toward the pump. Under BRI, the element 36 is clutch inner transmission shaft. A clutch disc (41,42) are between them; an engaged state when clutch is not pressurized (¶[0015]); a disengaged stated when clutch is pressurized (¶[0014]).
9- Applicant argued “Furthermore, the suggested outer shaft from MAZUR is not even an output shaft in the sense of the invention, since it is connected with the disk. In contrast to the argumentation in the European Search Opinion, there are a large number of options for coupling the input shaft to the pump shaft by way of different kinds of clutches. It is already hard to define the objective technical problem a skilled person would have to solve starting from the embodiment known from MAZUR as there are so many structural differences.”
In response to this argument, examiner respectfully disagrees the claim does not require an “output shaft”. Existence of alternative clutches do not negate obviousness under 103. USPTO does not apply EPO’s problem-solution approach. Under US 103 law requires only combing known element with predictable results. Mazur discloses shaft (43) extends rightward into the geartrain (gears 24-26); shaft 43 transmits torque from transmission side to the clutch. Under BRI, the element 43 is clutch outer transmission shaft. Mazur discloses a clutch structure; Hemmingsen teaches pneumatic actuation. Obviousness does not require the resulting structure to be identical to embodiment described in the application. The combination is consistent with KSR and yields predictable results.
10-Applicant argued “Firstly, there is a need for a motivation of the skilled person to replace the hydraulic clutch with a pneumatic clutch, as it is not clear, if and where a pneumatic control connection is available for shifting the clutch pneumatically”
In response to this argument, examiner respectfully disagrees Hemmingsen’s explicit teaches from ¶[0077] “the hydraulic clutch engaging/disengaging means maybe replaced with pneumatic clutch operating means.” This is a direct substitute which produces predictable results; there is no structural redesign is needed. Under KSR, replacing one known actuator mechanism with another known actuator mechanism to perform the same function is a routine design choice. Obviousness is not defeated by the need to add a known component plumbing; linkages or hydraulic line when replacing one known actuator mechanism with another. Applicant’s argument incorrectly suggests that if a system does not already use pneumatic control, the skilled person cannot consider it. This is not correct under KSR.
11-Applicant argued “In the next step there has to be a need for a variable displacement pump instead of a pump with constant flow rate. And in a third aspect, why should the skilled person change the whole structure of the clutch and transmission mechanism? As a result, starting from MAZUR, the skilled person could not arrive at a design of a emergency steering pump according to claim 1 of the present application, since there are so many technical and structural differences the skilled person would have to take into consideration.
In response to this argument, applicant claims there is no reason to use variable displacement pump; however, Mazur’s auxiliary pump (18) engages when system pressure drops (¶[0015]); disengaged automatically under normal pressure (¶[0014]). This implies that Mazur discloses variable displacement pump under BRI, there is no need to add variable pump. Regarding the third aspect, there is no structural changes. Mazur discloses the outer transmission shaft (43); inner transmission shaft (36); clutch discs (41, 42); pressure actuated piston (29). None of these structures require alternation to apply pneumatic actuation. The only change is pressure source which is from hydraulic to pneumatic. Lastly, Applicant states there are so many technical and structural differences. However, applicant does not identify any claimed limitation that Mazur and Hemmingsen does not satisfy. Obviousness is evaluated based on what the claim actually requires not on what applicant believes their invention embodies.
For those reasons the rejections under 35 USC 103 are maintained.
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 3-4 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 3 recites “the piston pushes the wave pad to move away from the friction plate after the air is passed in” in line 3-4. The claim was not enabled for the piston to push the wave pad to move away from the friction plate after the air is passed in. Base on the wands factors: (1) the level of predictability in the art: if the piston pushes the wave pad, it would cause the wave pad to be engaged with friction plate instead of move away from friction plate as claimed since the piston is on the right side of wave pad as shown in Fig.1; (2) no direction provided by the inventor how this limitation could be done.
The dependent claim is also rejected due to its dependency from claim 3.
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 3-4 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 3 recites “the piston pushes the wave pad to move away from the friction plate after the air is passed in” in line 3-4. While the specification discloses “the pneumatic clutch is provided with a piston 5, and the piston is connected with an air nozzle 6 for introducing air. After the air is introduced, the piston pushes the wave pad to move away from the friction plate, so that the wave pad is separated from the friction plate.” on page 7; however, it is unclear how the piston would able to push the wave pad to move away from the friction plate. Since from the drawing Fig.1, nozzle 6 and piston 5 are located on the right side of the friction plate and wave pad, so if the piston pushes the wave pad, it would cause the wave pad move to the left and engage with friction plate instead of move away from friction plate as claimed.
The dependent claim is also rejected due to its dependency from claim 3.
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) 1-2 is/are rejected under 35 U.S.C. 103 as being unpatentable over MAZUR (DE1044641B cited from IDS) in view of Hemmingsen (US 2002/0086769)
Claim 1: MAZUR discloses an emergency steering pump (18 and 19 Fig.2) comprising:
a clutch (19) , coordinating with an engine oil variable displacement pump (14) to provide oil power steering (via lines 11, 12, 9, 8, 7, see ¶[0008]),
the clutch (19) includes a clutch outer transmission shaft (43 as element 43 is being far away toward the transmission/right side) and a clutch inner transmission shaft (36 is located within the clutch assembly. Note that: “shaft” does not specifically defined in the specification. Thereof, the term is given its ordinary meaning which is cylindrical element. In this case, element 36 has cylindrical part that connects to shaft 35, as shown in Fig.2.);
the variable displacement pump (18) is provided with a pump shaft (35);
the clutch outer transmission shaft (43) is connected to a gearbox (25,26), the clutch inner transmission shaft (36) is connected to a pump shaft (35), and a clutch disc (42 with its friction linings and 41) is arranged between the clutch outer transmission shaft (43) and the clutch inner transmission shaft (25);
wherein when the clutch is not ventilated, the clutch disc is in engaged sate (e.g. engaged state), and the clutch outer transmission shaft (43) and the clutch inner transmission shaft (36) are connected in transmission (¶[009] or ¶[0015]);
when the clutch is ventilated, the clutch disc is in a disengaged state, and the clutch outer transmission shaft (43) and the clutch inner transmission shaft (36) are disconnected (¶0014]: piston at its right position).
MAZUR does not disclose the clutch is pneumatic clutch. Note: the clutch (19) of MAZUR is hydraulic actuated clutch instead of pneumatic.
Hemmingsen teaches a hydraulic clutch engaging/disengaging means ( 20, 22; Fig.1) can be replaced with pneumatic clutch operating means (See ¶[0077])
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have the teaching of Hemmingsen to replace hydraulic actuated clutch with pneumatic operated clutch in the system of MAZUR as a matter of obvious engineering design choice. Pneumatic actuated clutch and hydraulic actuated clutch are well known in the art, replace the hydraulic actuated clutch for another involves only routine skill in the art, and upon making the modification, one of ordinary skill in the art would arrive at predictable results. The advantage would be cleanliness no risk of fluid leaks, simplicity since easier to install and maintain and faster response due to compressibility and low inertia of air.
Claim 2: MAZUR as modified by Hemmingsen discloses the emergency steering pump with clutch according to claim 1, wherein the clutch disc includes a friction plate (41) and a wave pad (42 with its friction lining), the friction plate (41) is connected to (via 42, 38) the clutch outer transmission shaft (43), the wave pad (42 and its friction linings) is connected to the clutch inner transmission shaft (36), and the friction plate (41) and the wave pad (42 and its friction linings) are connected in transmission when the pneumatic clutch is not ventilated ( ¶[0009], ¶[0015]).
Allowable Subject Matter
Claims 6-10 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.
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 Lillian T Nguyen whose telephone number is (571)270-5404. The examiner can normally be reached Monday-Friday, 8:30am-5pm.
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/ERNESTO A SUAREZ/Supervisory Patent Examiner, Art Unit 3655
/LILLIAN T NGUYEN/Examiner, Art Unit 3655A