Drawings
The drawings are objected to because it fails to show the carbon or aramid fiber reinforced plastic recited in the claims. See MPEP 608.02 for the appropriate cross hatch pattern to depict such material. 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.
Specification
The disclosure is objected to because at paragraph 0042 the shield wall 10 is misnumbered.
The abstract of the disclosure is objected to because:
It begins with a phrase that can be implied
It is constituted by more than a single paragraph
It refers to the purported merits of the invention
A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 112
Claims 3, 5-6 & 8 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 central shaft has flexural rigidity vs mass ratio with which rotatable at 20,000 revolutions per minute or more.” However, the specification fails to disclose how to make the central shaft 1 so that it necessarily has a “has flexural rigidity vs mass ratio with which rotatable at 20,000 revolutions per minute or more.” As such, it would not be possible for one of ordinary skill in the art to make or use the claimed invention without undue experimentation. In making this determination the examiner affirms that he has considered the breadth of the claims;
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the nature of the invention;
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the state of the prior art;
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the level of one of ordinary skill;
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the level of predictability in the art;
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the amount of direction provided by the inventor; any
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existence of working examples; and the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Claim 5 recites that the “central shaft [made of fiber-reinforced plastic is electrically] conductive”. However, fiber-reinforced plastic is nonconductive (see Item 12 below), and the specification fails to disclose how to make the central shaft electrically conductive in spite of being made form nonconductive material. As such, it would not be possible for one of ordinary skill in the art to make or use the claimed invention without undue experimentation. In making this determination the examiner affirms that he has considered the breadth of the claims;
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the nature of the invention;
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the state of the prior art;
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the level of one of ordinary skill;
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the level of predictability in the art;
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the amount of direction provided by the inventor; any
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existence of working examples; and the quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Claims 5-6 & 8 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 5 recites the limitation, “a central shaft unit”. It is unclear is this central shaft unit is the same as, or different from the central shaft previously recited.
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 1-8 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-7 of Patent No. 12,306,253. although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-8 are generic to all that is recited in claims 1-7 of Patent No. 12,306,253. In other words, claims 1-7 of Patent No. 12,306,253 fully encompass the subject matter of claims 1-8 and therefore anticipate claims 1-8.
Claim Rejections - 35 USC § 102
Claims 1, 4 & 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Inoue, US 7,650,818. Fig. 2 shows a shaft unit that transmits rotation, comprising:
a central shaft (20, 32); and
a rigid cylinder (H) through which the central shaft penetrates, wherein the rigid cylinder has bearings (86, 88) at both ends that rotatably support the central shaft at both ends of the rigid cylinder,
wherein the central shaft is made of carbon fiber-reinforced plastic (col. 5, lines 41-45),
wherein the shaft unit is fixed to drive side base (22) and driven side base (24) at both end positions of the rigid cylinder, respectively.
Claims 1, 4 & 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rebsdorf, US 8,664,791. Fig. 1 shows a shaft unit that transmits rotation, comprising:
a central shaft (53); and
a rigid cylinder (34) through which the central shaft penetrates, wherein the rigid cylinder has bearings (40, 40) at both ends that rotatably support the central shaft at both ends of the rigid cylinder,
wherein the central shaft is made of carbon or aramid fiber-reinforced plastic (col. 2, lines 33-38),
wherein the shaft unit is fixed to drive side base (38) and driven side base (30) at both end positions of the rigid cylinder, respectively.
Claim Rejections - 35 USC § 103
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue. Inoue discloses shaft unit comprising every limitation of the claims but does not expressly disclose the distance between bearings at both ends is 700 mm or more and the central shaft has flexural rigidity vs mass ratio with which rotatable at 20,000 revolutions per minute or more. However, it would have been obvious to one having ordinary skill in the art to have the distance between bearings at both ends is 700 mm or more and the central shaft has flexural rigidity vs mass ratio with which rotatable at 20,000 revolutions per minute or more, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Kulling, 897 F.2d 1147, 14 USPQ2d 1056 (Fed. Cir. 1990).
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Rebsdorf for the same reason noted immediately above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Both Bedford and Ohtsuka (see col. 1, line 66 through col. 2, line 1) teach fiber reinforced plastic is nonconductive.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Greg Binda whose telephone number is (571)272-7077. The examiner can normally be reached 9:30-5:30 et.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Matthew Troutman can be reached at 571-270-3654. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Greg Binda/Primary Examiner, Art Unit 3679