DETAILED CORRESPONDENCE
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 .
Status of Claims
This is the first Office Action on the merits for application no. 18/741,422 filed on June 12th, 2024. Claims 1-21 are pending.
Priority
Examiner acknowledges the Applicant’s claim to priority of application IT 10 2023 0000 12471 filed on June 16th, 2023. A certified copy was received on February 19th, 2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on July 12th, 2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement was considered by the Examiner.
Claim Objections
Regarding Claim 9 (lines 3-4), please change the recitation of “onto the external thread of the control rod” to - - onto [[the]] an external thread of the control rod - - to establish antecedent basis.
Regarding Claim 10 (lines 2-3), please change the recitation of “with respect to said main extension axis (X-X) of the control rod” to - - with respect to [[said]] a main extension axis (X-X) of the control rod - - to establish antecedent basis.
Regarding Claim 14 (line 2), please change the recitation of “arranged on a printed circuit” to - - arranged on [[a]] the printed circuit - - as antecedent basis has already been established in claim 1.
Regarding Claim 15 (line 2), please change the recitation of “cylindrical shape about said main extension axis” to - - cylindrical shape about [[said]] a main extension axis - - to establish antecedent basis.
Regarding Claim 20 (lines 2-3), please change the recitation of “wherein the antenna has an axial thickness (T), parallel to the main extension axis (X-X), greater than or equal to the gap (G) from the position sensor” to - - wherein the antenna has an axial thickness (T), parallel to [[the]] a main extension axis (X-X), greater than or equal to [[the]] a gap (G) from the position sensor - - to establish antecedent basis.
Regarding Claim 21, please change the recitation of “A parking brake comprising an actuator as set forth in claim 1” to - - [[A]] The parking brake comprising [[an]] the actuator as set forth in claim 1 - - as antecedent basis has already been established in claim 1.
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.
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.
Claims 8-11 and 13 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 pre-AIA the applicant regards as the invention.
Regarding Claim 8 (lines 2-3), Applicant’s recited examples in the recitation of “wherein said antenna is a ring, such as a Grifax® ring” leads to confusion over the intended scope of claim 8. The lack of clarity renders the claim indefinite. Applicant could recite “wherein said antenna is a ring
Regarding Claim 13 (lines 2-3), Applicant’s recited examples in the recitation of “said metal portion comprises a metal foil and/or metal coating applied by metal coating, bonding, interlocking, undercutting, welding, CVD, PVD and the like” leads to confusion over the intended scope of claim 13. The lack of clarity renders the claim indefinite. Applicant could recite “said metal portion comprises a metal foil and/or metal coating applied by metal coating, bonding, interlocking, undercutting, welding, CVD, or PVD examination. See MPEP 2173.05(d) - Exemplary Claim Language ("for example," "such as").
Claims 9-11 are rejected based upon their dependency to a rejected base claim.
Claim 21 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. 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.
Regarding Claim 21, the recitation of “A parking brake comprising an actuator as set forth in claim 1” does not narrow the scope of the actuator and parking brake recited in claim 1 (lines 1-3). 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 § 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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-2, 4, 7, 14 and 16-21 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Gauthier (US 2026/0126101).
Regarding Claim 1, Gautier teaches an actuator (Fig. 1, “electromechanical actuator” 1) comprising:
a body (“housing” 2) at least partially containing a control rod (“main shaft” 7) operatively connected to a motor (“electric motor” 3) and to an actuating device (not shown) of a parking brake (not shown; [0002] – “The invention applies more specifically to the field of actuators for a parking lock system”),
said motor (3) being configured to move the control rod (7) along an operating stroke at least from a first position to a second position ([0027] – “electric motor 3 acts on a thrust member 18 configured to perform a predetermined linear movement (an extending and retracting movement) so as to come into contact with an external mechanism (not depicted) in the transmission gearbox”),
an antenna (“magnet” 17) directly and integrally associated with the control rod (7), said antenna (17) being arranged inside the body (2),
a position sensor (“sensor” 14) arranged on a printed circuit (“electronic board” 13), housed inside the body (2) and facing the control rod (7) and the antenna (17),
the position sensor (14) being configured to detect the presence and position of said antenna (17; [0034] – “on the basis of the magnetic field generated by the permanent magnet 17 and detected by the sensor 14, the system will know the exact position of the thrust member 18”).
Regarding Claim 2, Gautier teaches the actuator as set forth in claim 1,
wherein said control rod (Fig. 1, 7) has a main extension axis (“axis of rotation” X) and is movable along an axial direction parallel to said main extension axis (X).
Regarding Claim 4, Gautier teaches the actuator as set forth in claim 1.
wherein said antenna (Fig. 1, 17) is arranged coaxially (X) to the control rod (7).
Regarding Claim 7, Gautier teaches the actuator as set forth in claim 1,
wherein the antenna (Fig. 1, 17) is keyed and screwed onto a portion of the control rod (7) provided with external thread ([0032] – “As far as the magnet support 16 more particularly is concerned, this comprises a plastic body provided with an upper region that accepts the magnet 17 and a lower region in the form of a threaded nut configured to engage with a threaded section of the second end 7b of the main shaft 7. The magnet support 16 is preferably clip-fastened onto the threaded nut”).
Regarding Claim 14, Gautier teaches the actuator as set forth in claim 1,
wherein the position sensor (Fig. 1, 14) is arranged on a printed circuit (13) parallel to said control rod (7).
Regarding Claim 16, Gautier teaches the actuator as set forth in claim 1,
wherein said position sensor (Fig. 1, 14) is sized and positioned so as to cover and detect the position of the antenna (17) along said operating stroke (see Fig. 1).
Regarding Claim 17, Gautier teaches the actuator as set forth in claim 1,
wherein said control rod (Fig. 1, 7) is provided with roto-translational movement (via “drive means” 4 and “rotary-linear mechanism” 9).
Regarding Claim 18, Gautier teaches the actuator as set forth in claim 1,
wherein the antenna (Fig. 1, 17) is arranged inside the body (2) between the motor (3) and the position sensor (14; see Fig. 1).
Regarding Claim 19, Gautier teaches the actuator as set forth in claim 1,
wherein the antenna (Fig. 1, 17) is fixed to an inner end (“second end” 7b) of the control rod (7), contained inside the body (2), said inner end (7b) being opposite to and integral with an outer end (“first end” 7a) which interfaces with said actuating device (not shown; see Fig. 1).
Regarding Claim 20, Gautier teaches the actuator as set forth in claim 1,
wherein the antenna (Fig. 1, 17) has an axial thickness, parallel to the main extension axis (X), greater than or equal to the gap from the position sensor (14; see Fig. 1).
Regarding Claim 21, Gautier teaches a parking brake (not shown) comprising an actuator (1) as set forth in claim 1 (see 112(d) rejection above).
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.
Claims 3, 8, 10 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Gauthier (US 2026/0126101), in view of Ryba (US 11,359,682).
Regarding Claim 3, Gautier teaches the actuator as set forth in claim 2.
Gautier does not teach “wherein said antenna is axisymmetric with respect to said main extension axis”.
Ryba teaches an antenna (Fig. 5, “ring magnet” 88) is axisymmetric with respect to a main extension axis of a control rod (“guide piston” 68).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the antenna taught by Gautier with the antenna taught by Ryba, such that “wherein said antenna is axisymmetric with respect to said main extension axis”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of reliably detecting the position of the control rod taught by Gautier.
Regarding Claim 8, Gautier teaches the actuator as set forth in claim 1.
Gautier does not teach “wherein said antenna is a ring, such as a Grifax® ring, directly associated with the control rod” (see 112(b) rejection above).
Ryba teaches an antenna (Fig. 5, 88) is a ring (“ring magnet” 88) directly associated with a control rod (68).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the antenna taught by Gautier with the antenna taught by Ryba, such that “wherein said antenna is a ring, such as a Grifax® ring, directly associated with the control rod”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of reliably detecting the position of the control rod taught by Gautier.
Regarding Claim 10, Gautier and Ryba teach the actuator as set forth in claim 8,
Ryba teaches wherein said ring (Fig. 5, 88) is axisymmetric with respect to said main extension axis of the control rod (68; taught in combination with Gautier).
Regarding Claim 15, Gautier teaches the actuator as set forth in claim 1.
Gautier does not teach “wherein said antenna has a cylindrical shape about said main extension axis, with a radius greater than a distance or gap from the position sensor”.
Ryba teaches an antenna (Fig. 5, 88) has a cylindrical shape about a main extension axis of a control rod (68), with a radius greater than a distance or gap from a position sensor (“position sensor” 90).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the antenna taught by Gautier with the antenna taught by Ryba, such that “wherein said antenna has a cylindrical shape about said main extension axis, with a radius greater than a distance or gap from the position sensor”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of reliably detecting the position of the control rod taught by Gautier.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Gauthier (US 2026/0126101), in view of Ryba (US 11,359,682), and in view of Torchio (US 11,965,569).
Regarding Claim 5, Gautier teaches the actuator as set forth in claim 1.
Gautier does not explicitly teach “wherein said antenna is a ring at least partially made of metal and coaxial with said control rod”.
Ryba teaches an antenna (Fig. 5, 88) is a ring (88) coaxial with a control rod (68).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the antenna taught by Gautier with the antenna taught by Ryba, such that “wherein said antenna is a ring…and coaxial with said control rod”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of reliably detecting the position of the control rod taught by Gautier.
Gautier or Ryba do not teach “an antenna…at least partially made of metal”.
Torchio teaches an antenna (“target” 17) at least partially made of metal (col. 4, line 13 – “target 17 may be e.g. a metal plate or coating at the target site”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the antenna taught by Gautier and Ryba with the metal coating taught by Torchio, such that “an antenna…at least partially made of metal”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in doing so, and have the obvious advantage of reliably detecting the position of the control rod taught by Gautier.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Gauthier (US 2026/0126101), in view of Kutzberger (US 12,259,025).
Regarding Claim 6, Gautier teaches the actuator as set forth in claim 1,
wherein said antenna (Fig. 1, 17) is fixed to the control rod (7) by an external thread ([0032] – “As far as the magnet support 16 more particularly is concerned, this comprises a plastic body provided with an upper region that accepts the magnet 17 and a lower region in the form of a threaded nut configured to engage with a threaded section of the second end 7b of the main shaft 7. The magnet support 16 is preferably clip-fastened onto the threaded nut”).
Gautier does not teach “wherein said antenna is fixed to the control rod by interference and/or by gluing”.
Kutzberger teaches gluing threaded components (col. 4, line 16 – “A securing in place of the adjusting nut on the first housing part then takes place. The adjusting nut can be secured in place on the first housing part by means of a screw lock. The screw lock can be formed by a material connection between the first housing part and the adjusting nut. For example, an initially liquid locking agent is offered under the brand name Loctite, which is applied to the thread and gradually hardens, ensuring a reliable securing in place of the adjusting nut”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the liquid locking agent taught by Kutzberger to the threaded portion of the antenna taught by Gautier, such that “wherein said antenna is fixed to the control rod by interference and/or by gluing”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in combining known elements, and have the obvious advantage of reliably securing the antenna taught by Gautier.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Gauthier (US 2026/0126101), and in view of Torchio (US 11,965,569).
Regarding Claim 12, Gautier teaches the actuator as set forth in claim 1,
wherein said antenna (Figs. 1-2, 17) comprises a cylindrical support (“support” 16; see [0032] above).
Gautier does not teach “wherein said antenna comprises…a metal portion is applied”.
Torchio teaches an antenna (“target” 17) comprising a metal portion (col. 4, line 13 – “target 17 may be e.g. a metal plate or coating at the target site”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to manufacture the antenna taught by Gautier with the metal coating taught by Torchio, such that “wherein said antenna comprises…a metal portion is applied”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in doing so, and have the obvious advantage of reliably detecting the position of the control rod taught by Gautier.
Regarding Claim 13, Gautier and Torchio teach the actuator as set forth in claim 12,
Torchio teaches wherein said metal portion comprises a metal foil and/or metal coating applied by metal coating, bonding, interlocking, undercutting, welding, CVD, PVD and the like (see col. 4, line 13 passage above; see 112(b) rejection above).
Allowable Subject Matter
Claims 9 and 11 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 and rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Reasons for allowance, if applicable, will be the subject of a separate communication to the Applicant or patent owner, pursuant to 37 CFR § 1.104 and MPEP § 1302.14.
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
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure. The prior art of Bartolotta (US 2020/0040990) and Arch Guerrero (ES 1 217 209) listed in the attached "Notice of References Cited" disclose similar actuators comprising motors and position sensors related to various aspects of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James J. Taylor II whose telephone number is (571)272-4074. The examiner can normally be reached M-F, 9:00 am - 5:00 pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ernesto Suarez can be reached at 571-270-5565. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES J. TAYLOR II
Primary Examiner
Art Unit 3655
/JAMES J TAYLOR II/Primary Examiner, Art Unit 3655
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