DETAILED ACTION
This action is in response to the request for continued examination filed on August 22, 2025.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 29, 2025 has been entered.
Claim Objections
Claim 1 is objected to because of the following informalities: in the last line of claim 1 “positioned peripheral outside” apparently should read --positioned peripherally outside--. Appropriate correction is required.
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 1-6 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 1 is unclear regarding the position of the bearing surface, which is said to be “positioned peripheral outside of the edge surfaces”. As described in paragraph [0044] the bearing surfaces M are “formed at respective edge portions of the bottom surface of the holding portion 3.” Further, lines 1-3 of paragraph [0049] and Figs. 6-8 indicate that the bearing surface M is on the edge surface 4a, and lines 1-2 of paragraph [0047] describe the recessed portion 4 as being “formed by a part formed at a position inside the bearing surfaces M of the holding portions 3”. Thus, it is not clear how the bearing surfaces (M) can be considered to be peripherally outside of the edge surfaces as presently claimed, rendering the claim indefinite. The claim should instead recite that the bearing surface is positioned outside of the recessed portion in order to be consistent with the description in lines 1-2 of paragraph [0047].
Claim 3 recites the holding portion has “bearing surfaces in contact with the one end portion of the return spring”. It is not clear whether the bearing surfaces in claim 3 are the same element as the bearing surface now recited in claim 1. This appears to be a double inclusions of the earlier recited bearing surface.
Claim 6 recites “a bearing surface in contact with the one end portion of the return spring”. It is not clear whether the bearing surface in claim 6 is the same element as the bearing surface now recited in claim 1. Further it is noted that claim 6 is apparently directed to the embodiment shown in Figs. 9-11 and described in paragraphs [0055]-[0056] where a recessed portion 4 is formed on the rear side of the bearing surface M, as best seen in Fig. 12. The bearing surface M in this embodiment does not appear to be positioned peripheral outside of the edge surfaces of the recess 4 as required by the amended claim 1 since the bearing surface is on an opposite side of the piston. As such it is unclear how claim 6 can properly depend from claim 1 as amended.
Claims 2-5, which are dependent on claim 1, are indefinite for the same reason.
Lines 10-11 of each of the independent claims 7, 8 and 10 are unclear regarding the recessed portion, which is recited as having “inclined wall surfaces, connecting edge surfaces and a bottom surface”. This seems to indicate that the recess has connecting edge surfaces. As more accurately described in lines 1-3 of paragraph [0049], the recessed portion 4 “has the inclined wall surfaces 4c that connect the edge surfaces 4a (that is, the bearing surfaces M) and the bottom surface 4b”. Further, as described in lines 1-2 of paragraph [0047], the “recessed portion 4 is formed by a part formed at a position inside the bearing surfaces M of the holding portions 3.” Thus, the edge surfaces are believed to be outside of the recess, rather than part of the recess as these claims appear to recite.
Claim 9, which is dependent on claim 8, is indefinite for the same reason.
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 and 3 as best understood are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2008-25652 A (Kameoka).
Regarding claim 1, Kameoka discloses a clutch piston (2) attached to a clutch including clutch plates (11) and a return spring (12), the clutch piston, capable of transmitting a driving force of a vehicle or breaking a transmission of the driving force, displacing in an axial direction, the clutch piston comprising: an operation portion (outer circumferential portion 2b) that transmits motive power by causing the clutch plates to be in pressure contact with each other and breaks transmission of a driving force by releasing a force generated by the clutch plates in pressure contact with each other; a holding portion (main body portion 2a) that holds one end portion of the return spring; and a recessed portion formed in a predetermined part of the holding portion, wall surfaces of the recessed portion being inclined surfaces connecting edge surfaces of the holding portion and a bottom surface of the recessed portion and a bearing surface in contact with the return spring and positioned peripherally outside of the
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Regarding claim 3, the holding portion (2a) has bearing surfaces in contact with the one end portion of the return spring (12), and the recessed portion is formed at a position inside the bearing surfaces.
Allowable Subject Matter
Claims 2 and 4-10 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 7-10 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Response to Arguments
Applicant's arguments filed July 29, 2025 with regards to amended claim 1 have been fully considered but they are not persuasive.
On page 7 of the response filed July 29, 2025, Applicant argues that “the Kameoka reference illustrates the spring in contact with the edge and inclined walls.” This is not persuasive since the enlarged and annotated copy of Fig. 1 of Kameoka shows that the left-hand end the spring 12 contacts the holding portion 2a of the piston at positions which are outside of the inclined surfaces of the recess.
Applicant further argues on page 8 of the response filed July 29, 2025 that “the Kameoka reference does not illustrate a bearing surface peripherally outside of the edge surfaces.” This is not convincing since the limitation does not accurately describe the position of the bearing surface as explained above in the rejection of claim 1 under 35 U.S.C. 112(b). Fig. 1 of Kameoka shows the spring 12 contacting the piston 2 on bearing surfaces positioned peripherally outside of the recess.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Richard M. Lorence whose telephone number is (571)272-7094. The examiner can normally be reached Tuesday-Thursday from 11:00 AM-7:00 PM.
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/RICHARD M LORENCE/Primary Examiner, Art Unit 3617
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