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 . This Office Action is responsive to the Applicant's communication filed on June 15, 2026. In view of this communication, claims 1-24 are now pending in the application.
Election/Restrictions
Claims 20-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on June 15, 2026.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Two claims have been labeled claim 2; thus the first claim 2 will be noted as “2a” and the second claim 2 will be noted as “2b”, until correction is given.
Claims 16-17 are objected to because of the following informalities: “substantially” should be rewritten as “substantial”. Appropriate correction is required.
Drawings
The drawings are objected to because in figure 1, stator 112 points to the interior rotor and rotor 111 points to the exterior stator; and figure 10 should be labeled 910. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the weld line or lines being formed on one or both sides of at least one tooth must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-2b and 6-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-2, 4 and 6-18 of copending Application No. 18/439,824 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the substances of the claims remains the same between both applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 6, 8, 9, 12-13, and 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 9 recites, “the motors combined”, however in the dependent claim 1 the motors is referred as a singular OR multiple.
In order to properly conduct a search on the subject, the motors combined is interpreted to mean, “one or more motors”
Claim 6 recites the limitation "a rotor". There is redundant antecedent basis for this limitation in the independent claim.
Claim 8 recites, “grade M470-50A according to DIN EN 10106:2016-03”, it is unclear because the standard is not clearly defined by the specification.
Claim 12 recites, “ASTM standard A927/A927M -11”, this standard is not clearly defined by the specification.
Claim 13 is rejected solely for being dependent on claim 12
Claim 18 recites the limitation "a rotor and a stator" . There is redundant antecedent basis for this limitation in the independent claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 19 recites a "handwheel actuator mechanism for a steer by wire system of a vehicle" comprising a mechanical assembly of claim 1, but does not recite any additional limitations of said mechanical assembly. Thus, the claim does not further limit the subject matter of the claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1, 2b-7, 9-11, 14, 16, 18-19, and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over IKEDA(US 20210075273 A1) in view of POON (US 20160268864 A1).
In regards to claim 1, IKEDA teaches:
A mechanical assembly (Fig 1; 100)comprising:
a housing(Fig 1; 11/12);
a shaft (Fig 1; 14)rotatably mounted with respect to the housing(Fig 1; 11/12);
one or more motors(Fig 1; 10), each motor having a stator (Fig 1; 40) and a rotor(Fig 1; 50), each stator (Fig 1; 40) carrying a plurality of phase windings (Fig 1; 42)and each rotor(Fig 1; 50) carrying a plurality of magnet poles (Fig 1; 52)and being connected to the shaft(Fig 1; 14)[0033];
a control circuit (Fig 1; 25/35)adapted to control a current flowing into or out of the, or each, motor to cause a net torque to be applied to the shaft (Fig 1; 41)during a normal operation[0036-0037], and
in which the stator (Fig 1; 40)(Fig 8; 42) of at least one of the motors comprises a stack of laminations [0097].
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IKEDA does not teach:
a stack of laminations which each comprise a steel plate and an electrically conductive coating at least on faces of the steel plate that contact adjacent laminations.
POON teaches:
in which the stator (Fig 8; 42) of at least one of the motors comprises a stack of laminations [0007]which each comprise a steel plate and an electrically conductive coating (Fig 8; 12)at least on faces of the steel plate[0014] that contact adjacent laminations(zinc plating [0009-0013]).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify IKEDA by using the zinc coating taught by POON, in order to reduce oxidization of the core more cheaply than traditional tin plating[0003 POON].
In regards to claim 2b, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1:
in which the stator (Fig 1; 40)of the motor (Fig 1; 10)is configured to cause a drag torque to be generated due to a combination of eddy current, hysteresis and other losses within the stator during use of the motor(Fig 1; 10)(drag torque is innate and exists even when a motor is running under no load or when its output shaft is “free-spinning”. It’s not a result of intentional design for a specific function, but rather a byproduct of the physical realities of rotating machinery.).
In regards to claim 3, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1.
IKEDA does not teach:
in which the electrically conductive coating has a melting point below a melting point of the plate and the coatings on adjacent plates are fused together.
POON teaches:
in which the electrically conductive coating (Fig 8; 12)has a melting point below a melting point of the plate(Fig 8; 423) (zinc has a much lower melting point than iron) and the coatings on adjacent plates are fused together.
In regards to claim 4, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1.
IKEDA does not teach:
in which the coating of each plate comprises a low-melt temperature metal such as tin, zinc, lead or an alloy of any of these metals that allows for re-flow of the metal coating to occur at a temperature substantially below a melting temperature of the lamination material itself.
POON teaches:
in which the coating (Fig 8; 12)of each plate comprises a low-melt temperature metal such as tin, zinc[0010-0013], lead or an alloy of any of these metals that allows for re-flow of the metal coating to occur at a temperature substantially below a melting temperature of the lamination material itself(the melting temp of zinc is significantly lower than the plate).
In regards to claim 5, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1.
IKEDA does not teach:
in which the coating of each plate comprises a high melting point metal such as copper, nickel or silver, or an alloy of these metals that also serve to prevent corrosion of a base plate and help reduce contact resistance between adjacent laminations but without permitting a re-flow heating step to fuse the laminations together.
POON teaches:
in which the coating (Fig 8; 12)of each plate (Fig 8; 423)comprises a high melting point metal such as copper, nickel or silver, or an alloy of these metals that also serve to prevent corrosion(known to reduce corrosion [abstract])of a base plate and help reduce contact resistance between adjacent laminations (Fig 8; 423)but without permitting a re-flow heating step to fuse the laminations together.
Combination IKEDA/POON discloses the claimed invention except for a copper, nickel or silver coating. It would have been obvious to one having ordinary skill in the art at the time the invention was made to use the a copper, nickel or silver coating, 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 .
In regards to claim 6, IKEDA, in view of POON, teaches a mechanical assembly according to claim 5:
in which the stator(Fig 2; 40) comprises a set of teeth (Fig 2; 44)that project inwards from an outer restraining ring (Fig 2; 43)towards a rotor (Fig 2; 50)that is located concentric to the stator (Fig 2; 40) and inside the stator, a weld line or lines being formed on one or both sides of at least one tooth.
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In regards to claim 7, IKEDA, in view of POON, teaches a mechanical assembly according to claim 3:
in which the stator (Fig 1; 40)comprises two or more axially arranged laminations[0097], each having a thickness measured axially of at least 1mm or at least 2mm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify combination IKEDA/POON because they disclosed the a mechanical assembly except for the size of the lamination thickness. It would have been an obvious matter of changing the thickness of lamination in order to standardize manufactory or optimize magnetic flux. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 ISPQ 237 (CCPA 1955).
In regards to claim 9, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1:
in which at least one of the motors(Fig 1; 10) is configured to so that the motors (Fig 1; 10) combined provide at least 60 percent of the resistance to rotation for at least one speed in the range.
Combination IKEDA/POON discloses the claimed invention except for the range of optimal resistance being at least 60% . It would have been obvious to one having ordinary skill in the art at the time the invention was made to program the controller to supply optimal resistance at a speed, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In regards to claim 10, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1:
in which at least one of the motors is configured so that the combined motors provide substantially all of the drag torque over a range of non-zero rotational speeds(drag torque is innate and exists even when a motor is running under no load or when its output shaft is “free-spinning”. It’s not a result of intentional design for a specific function, but rather a byproduct of the physical realities of rotating machinery.).
In regards to claim 11, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1:
in which a single one of the motors(Fig 1; 10) is configured to provide at least 2 Nm over a substantial range of non-zero rotational speeds of the output shaft.
Combination IKEDA/POON discloses the claimed invention except for at least 2 Nm over a substantial range of non-zero rotational speeds. It would have been obvious to one having ordinary skill in the art at the time the invention was made to program the controller to supply at least 2 Nm over a substantial range of non-zero rotational speeds, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
In regards to claim 14, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1:
which includes a gearbox (Fig 21; 203)comprising a first gear fixed relative to the shaft (Fig 21; 204)and a second gear fixed relative to the output of the motor(Fig 21; 10), rotation of the first gear causing a rotation of the second gear[0125-0126].
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In regards to claim 16, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1:
including two motors where both the first motor and the second motor generate a significant drag torque such that the sum of the drag torque from both motors provides a substantially resistance to the turning of the output shaft when the motor is unpowered(drag torque is innate and exists even when a motor is running under no load or when its output shaft is “free-spinning”. It’s not a result of intentional design for a specific function, but rather a byproduct of the physical realities of rotating machinery.).
In regards to claim 18, IKEDA, in view of POON, teaches a mechanical assembly according to claim 1:
in which the motor may comprise a brushless permanent magnet type motor (Fig 1; 10)[0031-0032]comprising a rotor and a stator having a plurality of windings surrounding regularly circumferentially spaced teeth[0001].
In regards to claim 19, IKEDA, in view of POON, teaches:
A handwheel actuator mechanism for a steer by wire system of a vehicle comprising a mechanical assembly of claim 1 and a handwheel connected to the shaft[0122-0123].
In regards to claim 24, IKEDA teaches:
A motor(Fig 1; 10) for use in a mechanical assembly (Fig 1; 100)comprising:
a stator (Fig 1; 40)and a rotor(Fig 1; 50), the stator carrying a plurality of phase windings (Fig 1; 42)and the rotor (Fig 1; 50)carrying a plurality of magnet poles (Fig 1; 52)and being connected to a shaft(Fig 1; 14); and
in which the stator (Fig 1; 40) of at least one of the motors comprises a stack of laminations [0097].
IKEDA does not teach:
a stack of laminations which each comprise a steel plate and an electrically conductive coating at least on faces of the steel plate that contact adjacent laminations.
POON teaches:
in which the stator (Fig 8; 42) of at least one of the motors comprises a stack of laminations [0007]which each comprise a steel plate and an electrically conductive coating (Fig 8; 12)at least on faces of the steel plate[0014] that contact adjacent laminations(zinc plating [0009-0013]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify IKEDA by using the zinc coating taught by POON, in order to reduce oxidization of the core more cheaply than traditional tin plating[0003 POON].
Allowable Subject Matter
Claim 2, 8, 12-13, 15, and 17 is 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.
Regarding claim 2, The following is a statement of reasons for the indication of allowable subject matter:
The prior art teaches:
A mechanical assembly according to claim 1.
However, the prior art does not teach:
arranged such that in an event that the control circuit is powered down or disconnected and the shaft is rotated at 180 degrees per second by application of an external torque, a combination of motors overall provides a drag torque of at least 50 percent of a resistance to rotation of the shaft and a torque at the shaft of at least 2 Nm. (The underlined is allowable subject matter.)
Claim 2 is objected to, and not rejected, because the limitation of at least 50 percent of a resistance to rotation of the shaft and a torque at the shaft of at least 2 Nm when powered down or disconnected and the shaft is rotated at 180 degrees per second by application of an external torque is too specific which makes it novel.
Regarding claim 8, The following is a statement of reasons for the indication of allowable subject matter:
The prior art teaches:
A mechanical assembly according to claim 1, in which at least one of the motors includes a stator.
However, the prior art does not teach:
a laminated structure that includes 0.5 mm thick laminations of non-orientated electrical steel of grade M470-50A according to DIN EN 10106:2016-03 and with laminations glued together, a drag torque is provided that is at least 5 times greater at 1000 rpm and 20 times greater at 2000 rpm of the motor. (The underlined is allowable subject matter.)
Claim 8 is objected to, and not rejected, because the limitation of a laminated structure that includes 0.5 mm thick laminations of non-orientated electrical steel of grade M470-50A according to DIN EN 10106:2016-03 and with laminations glued together, a drag torque is provided that is at least 5 times greater at 1000 rpm and 20 times greater at 2000 rpm of the motor is too specific which makes it novel.
Regarding claim 12, The following is a statement of reasons for the indication of allowable subject matter:
The prior art teaches:
A mechanical assembly according to claim 1.
However, the prior art does not teach:
in which the stator comprises a material that has a specific total loss when excited with a sinusoidal flux density of amplitude 1 Tesla and frequency of 50 Hz greater than 30 W/kg, when tested according to the ASTM standard A927/A927M -11.(The underlined is allowable subject matter.)
Claim # is objected to, and not rejected, because the limitation of in which the stator comprises a material that has a specific total loss when excited with a sinusoidal flux density of amplitude 1 Tesla and frequency of 50 Hz greater than 30 W/kg, when tested according to the ASTM standard A927/A927M -11 is too specific which makes it novel.
Regarding claim 15, The following is a statement of reasons for the indication of allowable subject matter:
The prior art teaches:
A mechanical assembly according to claim 14 further comprising a second gear connected to and configured to rotate with the shaft.
However, the prior art does not teach:
a second motor having an output driving a respective second output gear, the second output gear being engaged with the first gear and hence the shaft. (The underlined is allowable subject matter.)
Claim 15 is objected to, and not rejected, because the limitation of and a second motor having an output driving a respective second output gear, the second output gear being engaged with the first gear and hence the shaft.
is too specific which makes it novel.
Regarding claim 17, The following is a statement of reasons for the indication of allowable subject matter:
The prior art teaches:
A mechanical assembly according to claim 1.
However, the prior art does not teach:
including two motors where only one of the two motors generates a significant drag torque such that the sum of the drag torque from both motors provides a substantially resistance to the turning of the output shaft when the motor is unpowered. (The underlined is allowable subject matter.)
Claim 17 is objected to, and not rejected, because the limitation of including two motors where only one of the two motors generates a significant drag torque such that the sum of the drag torque from both motors provides a substantially resistance to the turning of the output shaft when the motor is unpowered is too specific which makes it novel.
Claims 13 is objected to, and not rejected, because they depend from a claim that contains allowable subject matter.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS L SETZER whose telephone number is (571)272-3021. The examiner can normally be reached Mon-Fri, 8am-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Oluseye Iwarere can be reached at (571) 270-5112. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/N.L.S./Examiner, Art Unit 2834
/OLUSEYE IWARERE/Supervisory Patent Examiner, Art Unit 2834
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