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 .
Drawings
The preliminary amendment filed 05/17/2024 containing replacement drawing sheets for Figures 8B and 8C has been accepted.
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.
Claims 3-11 and 13 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.
Regarding Claims 3-7, there is insufficient antecedent basis for “the electric power steering gear…”.
Additionally, regarding claims 7 and 11, it is unclear whether the claim language is intended to recite a structure of an apparatus or a method step of making or assembling the apparatus. Therefore, the limitation “…further comprising disposing the bearing material…” is indefinite.
Regarding claims 8 and 9, it is unclear whether the claim language is intended to recite a structure of an apparatus or a method step of making or assembling the apparatus. Therefore, the limitation “…further comprising attaching the bearing material…” is indefinite.
Additionally, claim 8 recites “further comprising attaching the bearing material to the at least two tapered surfaces is composed of…”, it is grammatically unclear whether the bearing material is composed of the steel backed sheet with bronze and polymer fillers, or if the two tapered surfaces are composed of the steel backed sheet with bronze and polymer fillers, further clarification and correction is required.
Regarding claim 10, it is unclear whether the claim language is intended to recite a structure of an apparatus or a method step of making or assembling the apparatus. Therefore, the limitation “…further comprising attaching the at least two pieces…” is indefinite.
Regarding claim 13, the phrase “the tapered end having at least two tapered surfaces corresponding to the at least two inwardly tapered walls…” is ambiguous. Claim 13 introduces a “second groove having at least two inwardly tapered walls…” and claim 12 (which claim 13 is dependent on) introduces “a groove having two inwardly tapered walls…”, it is unclear which “tapered walls” the limitation points to, the “groove” introduced in claim 12, or the walls of the second groove of claim 13.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 3 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 4 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 5 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 6 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 9 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 12 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 16 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 14 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 14 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 19 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 20 of copending Application No. 18/599245 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
These are provisional nonstatutory double patenting rejections because the patentably indistinct claims have not in fact been patented.
Additionally:
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 5 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 7 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 14 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 9 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,594,983 Although the claims at issue are not identical, they are not patentably distinct from each other because they are obvious variants of each other.
Claims 8 and 18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of copending Application No. 18/599245 in view of Doerner (DE 102021103018 A1). The claimed invention of the copending application teaches all of the features and limitations except for: [the tapered surfaces] is composed of a steel backed sheet. Doerner teaches a sled component (3, Fig 1) and anti-rotation component (4, Fig 1) that is formed from a metallic material (“The sled 3, formed from a metallic material… The anti-rotation device 4 is designed as a stamped and bent part made from a metallic material, in particular from a sheet metal part…” paras 0029 and 0035 and 0036). Doerner further teaches a low friction coating (para 0026) [is applied to the components in order to reduce friction between slidably engaged components.] (“guide sections”, para 0026 and “anti-rotation device”, para 0027 ). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to additionally use the metal slidable elements with a low friction coating taught by Doerner with a reasonable expectation of success because it is well known in the art that frictional forces are expected and can cause wear to the parts, by applying a low friction coating, wear is reduced on the coated components.
Allowable Subject Matter
Claims 17 and 20 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.
Claims 3-11 and 13 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter.
The prior art of record fails to teach an electric power steering assembly for a commercial vehicle having all limitations claimed, particularly as follows:
Claim 1: wherein a groove having at least two inwardly tapered walls, and an anti-rotational pin having a tapered end disposed in the hole, the tapered end having at least two tapered surfaces corresponding to the at least two inwardly tapered walls, wherein a bearing material is disposed on each of the at least two tapered surfaces and is configured to contact the at least two inwardly tapered walls
Claims 7 and 17: the bearing material is disposed on the at least two tapered surfaces using screws on opposite ends of the anti-rotational pin.
Claims 10 and 20: wherein the bearing material is two pieces of “L-shaped” bearing material that is attached to the at least two tapered surfaces of the tapered end of the anti-rotational pin.
Claim 11: wherein the bearing material is disposed on the at least two tapered surfaces using an adhesive material.
Claim 12 : A method of providing a lash-free electric powered steering gear for a commercial vehicle, comprising:
wherein a groove having at least two inwardly tapered walls, and an anti-rotational pin having a tapered end disposed in the hole, the tapered end having at least two tapered surfaces corresponding to the at least two inwardly tapered walls, wherein a bearing material is disposed on each of the at least two tapered surfaces and is configured to contact the at least two inwardly tapered walls.
Since the prior art (e.g. JP 6130235 B2 and Doerner (DE 102021103018 A1) teaches an electric actuator with a groove and pin that lack a taper that matches both the pin and the groove, the prior art does not anticipate the claimed subject matter.
Additionally, while Doerner teaches a bearing material coating is applied to a metallic component (para 0026), Doerner does not teach the shape of the bearing material or how the bearing material is attached to the tapered surfaces.
For illustration purposes, Fig 8C of the examined disclosure shows the pins having a tapered element that matches the inwardly tapered groove element, which is different than the groove taught by the prior art of record (Fig. 1 of JP 6130235 B2).
Furthermore, it would not have been obvious to a skilled artisan to have modified the prior art in order to arrive at the claimed invention without resorting to impermissible hindsight.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Asakura (US 20140345966 A1) teaches an electric power steering system includes… the wall portion being formed integrally with the housing; and an elastic member provided between the wall portion and the outer ring portion and configured to retain the double row angular contact ball bearing to be elastically displaceable in the axial direction.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MORGAN M KNAUF whose telephone number is (703)756-4532. The examiner can normally be reached 8:00 AM -4:30 PM.
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/M.M.K./Examiner, Art Unit 3611
/VALENTIN NEACSU, Ph.D./Supervisory Patent Examiner, Art Unit 3611
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