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 .
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.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Response to Arguments
Applicant’s arguments, see page 6-7 of the remarks, filed January 15, 2026, with respect to the rejection(s) of claims 1-9 under 35 USC 112(b) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made under 35 USC 112(a).
Applicant argues on page 6-7 of the remarks regarding the 35 USC 112(b) rejection of claim 1 stating, “It is also explained how the Examiner's interpretation is incorrect. Fig. 1 of the present application is a radial view where the up-down direction on the page represents the radial direction R of the device. On the other hand, Fig. 3 is a vertical view where the up-down direction of the page represents the up-down, i.e., vertical direction V of the device. Publication, at [0049]. Thus, Fig. 1 does not show the first axis above the second axis in the vertical direction and instead shows the first axis being closest to inverter 10 in the radial direction which is consistent with the view in Fig. 3. Thus, Figs. 1 and 3 as well as the claim limitation are all consistent with each other. Nonetheless, the claim is amended to improve clarity by explicitly reciting "the first axis is below the second axis in the vertical direction."
The Examiner respectfully disagrees, because the Applicant’s specification disagrees at paragraph 0009 stating figures 1 and 3 are both an axial view yet the first and second axes are swapped in these figures showing the same view. The paragraph also makes clear all the figures are of the same embodiment with figure 4 showing the vertical view. Figures 1, 2, and 4 show the first axis (X1) above the second axis (X2). Figure 3 is the only figure to swap the axes to show the first axis below the second axis.
The Applicant’s explanation attempts to justify the axes flip by stating figure 1 does not show the axes in the vertical direction and instead shows a radial view in which the inverter (10) is closer to the first axis (X1). While figure 3 is a vertical view consistent with figure 1. Radial is defined as lines coming from a common center. This common center in figure 1 is at the bottom of the figure and the radial direction is vertical from the common center. The radial view is the same as the vertical view per definition and paragraph 0009. The Applicant also says both figures 1 and 3 are showing an up-down view. Both views have the inverter (10) at the top of the device (100). If figure 3 is a vertical view according to the Applicant’s arguments, then figure 1 showing the inverter (10) in the same location as shown in figure 3 would mean both figures are showing a vertical view albeit from different sides of the device (100) around the Y-axis. For example, figure 1 is a cross-sectional view and figure 3 is the front view.
Annotated figures 1 and 3 are provided below for reference. It is not possible for the first axis (X1) to be closer to the inverter (10) in a radial direction but further from the inverter in a vertical direction because they are the same direction as demonstrated in the annotated figures. Therefore, the 35 USC 112(a) rejection is raised.
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Figure 1
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Figure 3
Applicant’s arguments, see pages 7-8 of the remarks, filed January 15, 2026, with respect to the 35 USC 102(a)(2) rejection of claim 1 have been fully considered and are persuasive. The 35 USC 102(a)(2) rejection of claim 1 has been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-10 are 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 1 recites, “the first axis is below the second axis in the vertical direction” however the figures show otherwise. Figure 1 shows the inverter located above and adjacent to the first axis, the third axis below the first axis, and the second axis below the third axis. Figure 2 shows the same axes placement. Figure 3, which is the view of Figure 1 rotated along the Y-axis, shows a different order with the inverter located above and adjacent to the second axis, the third axis below the second axis, and the first axis below the third axis. The specification is silent on how the axes flipped from the first axis being adjacent to the inverter to the second axis now being adjacent to the inverter. According to the specification, the brief description of the drawings suggest all the figures are of the same embodiment. Further, figure 4 shows the first axis above the third axis and the third axis above the second axis matching the order shown in figures 1 and 2. All four figures show a vertical view of the invention. Figure 3 is the anomaly with regards to the first and second axes placement somehow being flipped while the inverter remains above the rotary machine when viewed in the vertical direction. How are the first and second axes swapped in position when viewed from the same vertical direction?
Dependent claims 2-10 are rejected, as they inherit the deficiency of the independent claim.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
With respect to claim 1 and claims dependent thereon, Inoue (US 2022/0316582) is regarded as being the closest prior art to the subject-matter of claim 1 and shows:
a vehicle drive device (100 of Figure 1-4), comprising:
a rotary electric machine (1 of Figure 1-3) to be a drive power source for wheels (W1. W2 of Figure 2), the rotary electric machine including a stator (11 of Figure 1) and a rotor (10 of Figure 1);
an input member (3 of Figure 1-2) drivably connected to the rotor,
a pair of output members (61, 62 of Figure 2) drivably connected to the respective wheels;
a differential gear assembly (5 of Figure 1-4) configured to distribute rotation transmitted from the input member to the pair of output members;
an inverter (19 of Figure 4) configured to control the rotary electric machine; and
a case (2 of Figure 1-4) accommodating the rotary electric machine, the input member, the differential gear assembly, and the inverter,
wherein the case includes an oil reservoir (70 of Figure 3, 6) configured to store oil (para. 0041),
the inverter is above the rotary electric machine and overlaps the rotary electric machine when viewed in a vertical direction (see Figure 4),
the differential gear assembly includes a differential input gear (51 of Figure 1-4) being an input element in the differential gear assembly,
the differential input gear is at least partially located in the oil reservoir (see Figure 3, 6) and is located on a second axis (A3 of Figure 1-2) different from a first axis (A1 of Figure 1-2) being a rotation axis of the rotor, and
the rotor has a lower end located above a lower end of the differential input gear (see Figure 1, 3-4).
The subject-matter of claim 1 differs from Inoue reciting “the first axis is below the second axis in the vertical direction.”
A detailed search and review of the prior art revealed a notable absence of the teachings recited in claim 1. The search was unable to find any prior art that teaches the limitation(s) “the first axis is below the second axis in the vertical direction.” Therefore, the prior art of record when considered as a whole, alone or in combination, neither anticipates nor renders obvious the subject-matter of claim 1.
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).
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Schumacher (US 4,779,486) discloses a differential gear momentum compensated actuator comprising a rotary electric machine on a first axis and a differential gear on a second axis with the first axis located below the second axis in the vertical direction.
Mogi (US 7,884,511) discloses a vehicle drive device comprising a rotary electric machine on a first axis and a differential gear assembly on a second axis.
Sada (US 7,786,640) discloses a vehicle drive device comprising an inverter, a rotary electric machine on a first axis, and a differential gear assembly on a second axis.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHARLES H REID whose telephone number is (571)272-9248. The examiner can normally be reached M-F 9:30-4:45 PM.
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/Charles Reid Jr./Primary Examiner, Art Unit 2834
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