DETAILED ACTION
This is the first Office action on the merits of Application No. 18/678,903.
The preliminary amendment filed on June 4, 2024 has been entered. Claims 1-14 are currently pending.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on May 30, 2024 has been considered by the examiner.
Drawings
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 “security lock” (claim 3, line 2) and the “electrical actuator” (claim 4, line 2) must be shown or the features canceled from the claims. 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.
Claim Objections
Claims 8, 10 and 14 are objected to because of the following informalities:
in claim 8, lines 5-6, “cutout, mechanically releasing” should be changed to
--cutout, and mechanically releasing--;
in claim 10, line 1, “Claim 9, removing” should be changed to --Claim 9, further comprising removing--; and
in claim 14, line 1, “Claim 9, removing” should be changed to --Claim 9, further comprising removing--.
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 7-11, 13 and 14 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “a tool”, and the claim also recites “in particular an individual special tool” which is the narrower statement of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claim.
Method claim 8 is dependent upon apparatus claim 1 which is directed to an electromechanical service brake. The claimed method includes the step of “providing an electromechanical service brake according to claim 1”. Claim 1 recites that the electromechanical service brake comprises an integrated parking brake having blocking element, an electric motor, and a transmission surrounded by a housing having a cutout. Thus, the recitations of “an electric motor”, “a transmission”, “a housing” “a cutout” and “a blocking element” in claim 8 appear to be double inclusions of these elements which were previously recited in claim 1. The claim is considered indefinite since it is unclear whether the method requires two of each of these elements.
Claim 10 recites the limitation “the blocking brake” in line 4. There is insufficient antecedent basis for this limitation in the claim. It is suggested that in line 4 “brake” should be changed to --element-- in order to be consistent with the earlier recitation of the blocking element in claims 1 and 8.
Claims 11 and 13 are indefinite since they are dependent upon claim 7, which is deemed to be indefinite for the reasons stated above.
Claims 9 and 14 are indefinite since they are dependent upon claim 8, which is deemed to be indefinite for the reasons stated above.
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 1-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 2005/0217952 A1 (Usui).
Regarding claim 1, Usui discloses an electromechanical service brake (1 in Fig. 1) having an integrated electrical parking brake (25), comprising an electric motor (21) and a control unit (40 in Fig. 2), wherein the parking brake comprises a blocking element (i.e., 54 in Figs. 2-5, or 140 in Figs. 8 and 9) which, in an arrested state of the parking brake, blocks a transmission (23, 50) of the electrochemical service brake (see e.g. paragraphs [0064]-[0066]), wherein the electric motor and the transmission are surrounded by a housing (13, 14) which has a cutout (120 in Fig. 2) which allows the blocking element to be manually actuated from the outside (see e.g. paragraphs [0073]-[0076] and [0089]-[0090]), such that the blocking element can, from the outside, be mechanically transferred from the arrested state into an opened state, wherein, in the opened state, the transmission is freely movable.
Regarding claim 2, the electromechanical service brake (1) furthermore comprises a cover (121), wherein the cover covers the cutout (120) in the housing (13, 14).
Regarding claim 3, the cover (121) is equipped with a security lock (threaded engagement of bolt 121 in hole 120), wherein an opening tool (inserted in the hexagonal recess in the end of the bolt seen in Fig. 3) is required to open the cover.
Regarding claim 4, an electrical actuator (60) is provided for moving the blocking element (54 or 140) into the arrested state and the released state (see e.g. paragraph [0077]).
Regarding claim 5, the actuator (60) of the parking brake (25) has a load-free connection to the transmission (23, 50).
Regarding claim 6, the blocking element (54 or 140) is a pawl, wherein the pawl engages into a toothing (57) of the transmission (23, 50).
Regarding claim 7, the housing has an end wall (14) and a side wall (13), and the side wall has the cutout (120), wherein a tool (122 in Figs. 2-5, or 122B in Figs. 8-9), in particular an individual special tool, is provided which extends through the cutout to the blocking element (54 or 140) in order to move said blocking element.
Regarding claim 8, Usui discloses a method for emergency unlocking of a parking brake (25), wherein the parking brake is integrated in an electromechanical service brake (1), the method comprising providing an electromechanical service brake according to claim 1 (as discussed above), wherein an electric motor (21) and a transmission (23, 50) of the electromechanical service brake are surrounded by a housing (13, 14) that has a cutout (120), mechanically releasing a blocking element (i.e., 54 in Figs. 2-5, or 140 in Figs. 8 and 9) of the parking brake, from the outside through the cutout from an arrested state in which the blocking element blocks the transmission (see paragraphs [0073]-[0076] and [0089]-[0090]).
Regarding claim 9, the method further comprises using a tool (122 in Figs. 2-5, or 122B in Figs. 8-9) to release the blocking element (54 or 140), wherein the tool is used to pivot the blocking element out of engagement with the transmission (23, 50).
Regarding claim 10, the method further comprises removing a cover (121) from the electromechanical service brake to expose the cutout (120), before releasing the blocking brake (see e.g. paragraphs [0073]-[0076] and [0089]-[0090]).
Regarding claim 11, Usui discloses a tool (122 in Figs. 2-5, or 122B in Figs. 8-9) for an electromechanical service brake (1) according to Claim 7. It is noted that the tool is claimed merely in terms of the intended use, which is of no patentable significance. The structural details of the tool should be recited instead of the purpose for which it is intended to be used. See MPEP § 2111.02.
Regarding claim 12, the pawl (54 or 140) has a pivot bearing end (53), has a tooth (54a) which engages into the toothing (57), and has an unlocking projection (59) which, in the arrested state, faces the cutout (120).
Regarding claim 13, the tool (122 or 122B) is provided which extends through the cutout (120) to the blocking element (54 or 140) in order to move said blocking element.
Regarding claim 14, the method further comprises removing a cover (121) from the electromechanical service brake (25) to expose the cutout (120), before releasing the blocking brake.
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, 2, 4, 6 and 11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1, 3, 6, 7 and 8, respectively, of copending Application No. 18/806,027 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because all of the limitations of presently pending claim 1 are recited in claim 1 of the ‘027 application; the cutout recited in presently pending claim 2 is recited in claim 3 of the ‘027 application; the electrical actuator\t recited in presently pending claim 4 is recited in claim 6 of the ‘027 application; the cutout recited in presently pending claim 2 is recited in claim 3 of the ‘027 application; the pawl and toothing recited in presently pending claim 6 is recited in claim 7 of the ‘027 application; and the tool recited in presently pending claim 11 is recited in claim 8 of the ‘027 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2005/0077782 A1 discloses an electromechanical service brake in Fig. 1 having an integrated electrical parking brake with a ratchet mechanism R having a claw 42a capable of engaging ratchet teeth 32a.
US 2025/0060013 A1 is the publication of copending Application No. 18/806,027 relied upon in the provisional nonstatutory double patenting rejection above.
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