DETAILED ACTION
This is the first Office action on the merits of Application No. 18/754,286 filed June 26, 2024. Claims 1-23 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 references cited in the parent applications have been considered in accordance with MPEP 609.02, but will not be listed on any patent resulting from this application unless properly listed in an IDS or cited by the examiner on form PTO-892.
The U.S. patents which have been lined through on the forms PTO/SB/08 filed on June 26, 2024 and January 13, 2025 were not identified by inventor as required by 37 CFR 1.98(b)(1).
The Chinese Office action listed on the form PTO/SB/08 filed on January 13, 2025 has been lined through since it was not accompanied by an English language translation or a concise explanation of the relevance thereof as required by 37 CFR 1.98(a)(3)(i).
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 “wiring electrically connecting the stator to an electric power source” recited in claims 1 and 18 must be shown or the feature(s) canceled from the claim(s). 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.
Specification
The disclosure is objected to because of the following informalities:
in paragraph [0026], line 8, “studs 142” are” should be -- studs 142’ are --; and in paragraph [0027], line 7, “coupling members 140, 142” should be -- coupling members 150, 152 --.
Appropriate correction is required.
Claim Objections
Claim 18 is objected to because of the following informalities:
in line 4 “magnet and” should be changed to --magnet; and-- since the locking members and pocket plate are not part of the translator; and
in line 9 “cause control” is redundant. It is suggested that “cause” should be deleted in order to be consistent with the description in paragraph [0004], line 4.
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 14 and 15 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.
The scope of claims 14 and 15 is unclear. The preamble of claim 14 recites “The wheel hub clutch of claim 13”. But claim 13, and claims 1 and 11 upon which claim 13 depends, are drawn to a control system for a wheel hub clutch rather than to a wheel hub clutch per se. Claim 15 depends from claim 14 and similarly recites “The wheel hub clutch”. It is unclear whether claims 14 and 15 are directed to a wheel hub clutch or to a control system, rendering the claims indefinite. is suggested that in line 1 of each of claims 14 and 15 “wheel hub clutch” should be changed to --control system--.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2021/0246950 A1 (Pawley) in view of U.S. Patent No. 6,935,476 B2 (Kurmaniak).
Regarding claim 1, no patentable weight is given to the statement of intended use “for a wheel hub clutch for a wheel hub” in the claim preamble. Pawley discloses a control system (control assembly 110, see Figs. 6-13) for a coupling (112) comprising a stator (174) and a translator (157) having a permanent magnet (188, see paragraphs [0095] and [0104]). The stator is selectively powered through controlled electric power (energization of the coils 176, see paragraph [0100]) to control translation of the translator through interaction between the stator and the permanent magnet of the translator, wherein the translation of the translator is controlled between an engaged state (locked mode shown in Fig. 13) and a disengaged state (free wheel mode shown in Fig. 12), and wherein, in the engaged state, a plurality of locking members (122) are engaged with a plurality of notches (locking formations 135) of a selectively rotatable notch plate (124) whereby the plurality of locking members are in a plurality of pockets (132) of a rotatable pocket plate (126) corresponding to the plurality of notches.
While Pawley does not explicitly describe “wiring electrically connecting the stator to an electric power source”, the provision of the wiring and an electric power source would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art in view of the Kurmaniak reference, which is from the same field of endeavor of electromagnetically actuated couplings as Pawley, and teaches providing wiring 124 connected to a power source 56 in order to selectively energize an electromagnetic coil 122. See Figs. 2 and 3 and column 6, lines 11-13.
Regarding claim 11, Pawley further discloses a plurality of plungers (spring actuators 158) carried in a plurality of plunger passages (155) within the rotatable pocket plate (126), wherein the translator (157) further includes a translator hub (180, 159) coupled to the plurality of plungers, and wherein the permanent magnet (188) is carried by the translator hub and cooperates with at least one electromagnet (176) of the stator (174) to translate the translator to drive the plurality of locking members (122) into engagement with the plurality of notches (135) of the notch plate (124) to transmit torque between the notch plate and the rotatable pocket plate.
Regarding claim 12, Pawley further discloses the translator hub having a main body (180) and a plunger flange (159) extending radially outwardly from the main body and coupled to the plurality of plungers (158).
Regarding claim 13, Pawley further discloses a stator support (housing 161, see Fig. 10) including: an outboard portion coupled to the stator (174), and an inboard bearing journal (in contact with the outer race of bearing 178).
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 1-23 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 are included in claims 4, 13, 6-12, 2, 3, 14-16, 18 and 19, 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent No. 5,042,627 discloses a control apparatus for a wheel hub clutch 10 including an electric power source 52 connected to an electric motor 32 by wiring 23.
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
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