DETAILED ACTION
This action is in response to the amendment filed June 25, 2026. Claims 1, 14, 15 and 18 have been amended and new claims 24 and 25 have been added. Claims 1-25 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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 2, 2026 has been considered by the examiner.
Drawings
The drawings received on June 26, 2024 are acceptable. The drawing objection set forth in the previous Office action has been withdrawn in light of Applicant’s comments on page 1 of the remarks filed June 25, 2026.
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 1-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-30 of U.S. Patent No. 12,054,041 in view of U.S. Patent No. 6,935,476 (Kurmaniak).
Claim 26 of the ‘041 patent is drawn to a wheel end system comprising a wheel hub (line 2), a wheel hub clutch (line 15) and a control assembly (line 37) including a stator (line 38) including an electromagnet, and a translator (line 43) having a permanent magnet carried by the translator hub and that cooperates with the at least one electromagnet of the stator to translate the translator (lines 57-60). Claim 26 of the ‘041 patent additionally recites a plurality of locking members (line 30), a notch plate with a plurality of notches (first coupling member with locking features (lines 19-21) and a pocket plate with a plurality of pockets (second coupling member rotatable having a plurality of pockets, lines 22-26). Claim 2 of the ‘041 patent also recites a wheel hub clutch comprising “a stator including at least one electromagnet; and a translator rotatable about and translatable along a rotational axis and coupled to the pocket plate to be rotatable therewith, and including a translator hub coupled to the plurality of plungers, and a permanent magnet carried by the translator hub and that cooperates with the at least one electromagnet of the stator to translate the translator to drive the plurality of locking members into engagement with the plurality of notches of the notch plate to transmit torque between the notch plate and the rotatable pocket plate.”
Claims 2 and 26 of the ‘041 patent differ from presently pending claim 1 in that they do not recite the “wiring electrically connecting the stator to an electric power source” to selectively power the stator recited in presently pending claim 1, lines 4-7. However, the Kurmaniak reference provides evidence that the provision of wiring (124) to supply power from a power source (56) to an electromagnet (122) to control engagement and disengagement of a clutch (106) was known before the effective filing date of the present invention (see column 6, lines 8-35). It would have been obvious to a person having ordinary skill in the art to control translation of the translator of the ‘041 patent by controlling power carried by wiring in view of the teaching of Kurmaniak.
The limitations of presently pending claims 2-17, 24 and 25 are included in claims 4, 13, 6-12, 2, 3, 14-16, 18, 19 and 26 respectively, of the ‘041 patent.
While the method of controlling the wheel hub clutch set forth in presently pending claims 18-23 is explicitly claimed in the ‘041 patent it is believed to be obvious from the structure recited in claims 2 and 26 of the patent which comprises a wheel hub clutch, and a stator and a translator carrying a permanent magnet which cooperates with an electromagnet of the stator to control engagement of the locking members in view of the teaching of Kurmaniak as discussed above that the provision of wiring (124) to supply power from a power source (56) to an electromagnet (122) to control engagement and disengagement of a clutch (106) was known before the effective filing date of the present invention (see column 6, lines 8-35). Note also that the limitations regarding the inter-axle disconnect and inter-axle differential are recited in presently pending claims 22 and 23 are recited in claim 25 of the ‘041 patent.
Response to Arguments
Applicant’s arguments appearing on page 2 of the remarks filed June 25, 2026 with respect to amended independent claim 1 have been fully considered and are persuasive. Accordingly, the rejection of claims 1 and 11-13 under 35 U.S.C. 103 has been withdrawn.
Applicant's arguments filed appearing on page 1 of the remarks filed June 25, 2026 with respect to the nonstatutory double patenting rejection have been fully considered but they are not persuasive. Applicant argues that “the claim scope of the currently pending claims is yet unknown”. This is not found to be persuasive since the scope of the currently pending claims can be determined by reading the currently pending claims.
Conclusion
THIS ACTION IS MADE FINAL. 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 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.
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, John R. Olszewski can be reached at 571-272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RICHARD M LORENCE/Primary Examiner, Art Unit 3617
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