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 .
Response to Amendment
The amendment filed 12/09/2025 has been entered. Claims 18-25 and 27-37 remain pending in the application.
The declaration under 37 CFR 1.132 filed 12/09/2025 is insufficient to overcome the rejection of claims 18 and 34 based upon 35 U.S.C. 102(a)(1) as set forth in the last Office Action because: The declaration fails to set forth any actual “objective” scientific facts but rather sets forth only the “subjective” opinion of the co-inventor of the current application, i.e., Sergej Solovev. While the co-inventor’s stated accomplishments are impressive and the co-inventors stated opinions have been considered very carefully, the declaration fails to set forth any actual scientific facts that would outweigh the facts set forth in the prior art.
First, the prior art establishes, as fact, that “Hard wheel 15 the wave gear is connected to the slave Eagle 2 and the tube 16, which supports four…cut the bearings 17 and 18 onto the casing 3” (see NPL of 05/05/2025, page 2 lines 5-7). More specifically, the bearings 17 and 18 are supported by the tube 16 and the driven link 2. The co-inventor’s declaration provides an opinion contrary to the facts provided by the prior art. For example, section 9 of the declaration states “In Poletuchij, one bearing support 7 is provided between the output shaft 2 and the drive shaft 6, and two additional bearings 17 and 18 support the tube or pipe 16 and the output shaft 2 on the housing 3”. It is the opinion of the co-inventor that the tube 16 and the output shaft 2 are supported by the bearings 17 and 18. However, the co-inventor’s declaration directly contradicts the disclosure of Poletuchij.
Second, in section 7 of the declaration, the co-inventor states “As shown in Figure 2 and described in the above-referenced patent application, the output shaft 2 does not make contact with, and consequently does not receive support from drive shaft bearings 14.1 and 14.2 on housing 13 in which drive shaft 1 is mounted”. According to the declaration, if the output shaft 2 does not make contact with the drive shaft bearings 14.1 and 14.2, then the output shaft does not receive support from the bearings. Following the logic of the co-inventor, the output shaft 2 of the prior art does not make contact with the drive shaft bearings 17 and 18, and therefore the output shaft does not receive support from the bearings.
Third, the declaration fails to set forth any evidence to refute the substantial similarities between the prior art and the instant application. For example, in the instant application, a path between the output shaft and the bearings can be shown as: output shaft 2, flange 16, ring 19, housing connection 23 and bearing 14.2. Similarly, in the prior art, a path between the output shaft and the bearings can be shown as: output shaft 2, flange between output shaft 2 and 15, hard wheel 15, tube 16 and bearing 18. The instant application and the prior art each have 5 elements in a path from the output shaft to the bearing. However, no factual evidence is provided in how the arrangement of the instant application results in the bearing not supporting the drive shaft, but the prior art results in the bearing supporting the drive shaft.
Fourth, the declaration fails to set forth any factual evidence that the prior art structure would not be capable of performing functions/properties in the same manner as applicant's invention, i.e., the first bearing arrangement supporting the drive shaft but not the output shaft. Note that the prior art structure is substantially identical to applicant’s claimed product structure such that the PTO must presume the claimed functions/properties to be inherent thereto, thus presenting a prima facie case and properly shifting burden to applicant to prove otherwise with evidence obtained from testing the prior art product. This burden is fairly applicant's since the Patent Office is unable to manufacture or obtain prior art products and applicant cannot meet this burden with mere argument/opinion. See the following:
MPEP §2112.01 (I) states “When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent… [and] a prima facie case of either anticipation or obviousness has been established… the applicant has the burden of showing that they are not…” (emphasis added).
MPEP §2112 (V) states “[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted].’ The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)).”
MPEP §2112 (IV) further states “In In re Schreiber, 128 F.3d 1473, 44 USPQ2d 1429 (Fed. Cir. 1997), the court affirmed a finding that a prior patent to a conical spout used primarily to dispense oil from an oil can inherently performed the functions recited in applicant’s claim to a conical container top for dispensing popped popcorn. The examiner had asserted inherency based on the structural similarity between the patented spout and applicant’s disclosed top, i.e., both structures had the same general shape. The court stated: [N]othing in Schreiber’s [applicant’s] claim suggests that Schreiber’s container is of a ‘different shape’ than Harz’s [patent]. In fact, [ ] an embodiment according to Harz (Fig. 5) and the embodiment depicted in Fig. 1 of Schreiber’s application have the same general shape. For that reason, the examiner was justified in concluding that the opening of a conically shaped top as disclosed by Harz is inherently of a size sufficient to ‘allow [ ] several kernels of popped popcorn to pass through at the same time’ and that the taper of Harz’s conically shaped top is inherently of such a shape ‘as to by itself jam up the popped popcorn before the end of the cone and permit the dispensing of only a few kernels at a shake of a package when the top is mounted to the container.’ The examiner therefore correctly found that Harz established a prima facie case of anticipation. In re Schreiber, 128 F.3d at 1478, 44 USPQ2d at 1432.”
MPEP §2114(I) states “Apparatus claims must be structurally distinguishable from the prior art… While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997) (The absence of a disclosure in a prior art reference relating to function did not defeat the Board’s finding of anticipation of claimed apparatus because the limitations at issue were found to be inherent in the prior art reference); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971);In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original).”
MPEP §2114(II) states “[the] Manner of operating the device does not differentiate apparatus claim from the prior art… A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987) (The preamble of claim 1 recited that the apparatus was “for mixing flowing developer material” and the body of the claim recited “means for mixing ..., said mixing means being stationary and completely submerged in the developer material”. The claim was rejected over a reference which taught all the structural limitations of the claim for the intended use of mixing flowing developer. However, the mixer was only partially submerged in the developer material. The Board held that the amount of submersion is immaterial to the structure of the mixer and thus the claim was properly rejected.)” (emphasis in original).
In In re Best the court relied upon In re Ludke and In re Brown to explain that “Where, as here, the claimed and prior art products are identical or substantially identical, or are produced by identical or substantially identical processes, the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product. See In re Ludke, supra. Whether the rejection is based on 'Inherency' under 35 USC 102, on 'prima facie obviousness’ under 35 USC 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products. See In re Brown, 59 CCPA 1036, 459 F.2d 531, 173 USPQ 685 (1972)" (emphasis added) In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977);
In re Schreiber found that "choosing to define an element functionally, i.e., by what it does, carries with it a risk... [W]here the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” (emphasis added) See In Re Schreiber, 128 F.3d 1473 (Fed. Cir. 1997).
In re Schreiber held that “Apparatus must be distinguished from the prior art in terms of structure rather than function.” In re Schreiber, 128 F.3d 1473, 1477-78 44 USPQ2d 1429, 1431-32 (Fed.Cir.1997).
In re Swinehart and In re Ludtke held that “[I]t is elementary that the mere recitation of a newly discovered function or property, inherently possessed by things in the prior art, does not cause a claim drawn to those things to distinguish over the prior art. Additionally, where the Patent Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.” (emphasis added) In re Swinehart, 58 CCPA --, --F.2d --, 169 USPQ 226 (1971), and In re Ludtke, 441 F.2d 660, 664, 169 USPQ 563, 566 (CCPA 1971).
In re Brown held that “[I]t is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” (emphasis added) In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972).
In re King held that "Contrary to appellant's reasoning, after the PTO establishes a prima facie case of anticipation based on inherency, the burden shifts to appellant to prove that the subject matter shown to be in the prior art does not posses the characteristic relied on… Here, appellant’s burden before the board was to prove that Donley’s structure does not perform the so-called method defined in the claims when placed in ambient light. Appellant did not satisfy that burden, it did not suffice merely to assert that Donley does not inherently achieve enhanced color through interference effects, challenging the PTO to prove the contrary by experiment or otherwise. The PTO is not equipped to perform such tasks.” In re King, 801 F.2d 1324, 1327, 231 USPQ 136, 138 (Fed. Cir. 1986).
In re Spada held that “Spada was reasonably required to show that his polymer compositions are different from those described by Smith. This burden was not met by simply including the assertedly different properties in the claims. When the claimed compositions are not novel they are not rendered patentable by recitation of properties, whether or not these properties are shown or suggested in the prior art." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
See Hewlett-Packard Co. v. Bausch & Long Inc., 909 F.2d 1464, 1469, 15 USPQ2d 1525, 1528 (Fed. Cir. 1990) held that “Apparatus claims cover what a device is, not what a device does.”
MPEP §716.01(c )(II) states “The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).” Accordingly, applicant has the fair burden of obtaining and testing the prior art in order to present actual evidence proving that the prior art structure is incapable of performing the claimed functions.
Therefore, given at least the arguments presented above, the declaration under 37 CFR 1.132 filed 12/09/2025 is insufficient to overcome the rejection of claims 18 and 34 based upon 35 U.S.C. 102(a)(1) as set forth in the Non-Final Office Action mailed 10/20/2025.
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.
Claims 27-28 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 27 lines 2-4 recite the limitation “a roller bearing of the second bearing arrangement via which the elliptical disk deforms the external gear wheel to produce the partial engagement”. It is unclear how the second bearing arrangement is situated axially outside the partial engagement on the drive shaft, as required by claim 1, but also aligned with causing the partial engagement, as shown in Fig. 2.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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.
Claim(s) 18-21, 27-30 and 32-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Poletuchij (SU 882735 A1).
Regarding claim 18, Poletuchij discloses a strain wave gear (see figure; see NPL of 05/05/2025 Description line 3, wherein a wave gear is disclosed) comprising: a drive shaft (5, 6) mounted in a housing (16); and an output shaft (2 and the flange between 2 and 15); a first bearing arrangement (17, 18) supporting the drive shaft but not the output shaft (see figure, wherein 17,18 support drive shaft 5, 6 via 3, 4 but does not support the output shaft 2 and the flange between 2 and 15); a second bearing arrangement (7) supporting the output shaft on the drive shaft (see figure, wherein 7 supports 2 and the flange between 2 and 15 on drive shaft 5, 6); a flexible external gear wheel (12) connected to the drive shaft (see figure, wherein 12 is connected to 5, 6 via 14 and 4) and a rigid internal gear wheel (15) connected to the output shaft (see figure, wherein 15 is connected to 2 and the flange between 2 and 15 via unlabeled bolts); and a wave generator (9) that engages the flexible external gear wheel from a radially inward direction of the flexible external gear wheel (see figure, wherein 9 engages 12 from a radially inward direction of 12), to establish a partial engagement of the flexible external gear wheel with the rigid internal gear wheel over a circumference of the flexible external gear wheel and to move the partial engagement in a circumferential direction (see figure; inherent operation of a strain wave gear); wherein the output shaft is supported coaxially by the drive shaft using the second bearing arrangement (see figure, wherein the output shaft 2 and the flange between 2 and 15 is supported coaxially by the drive shaft 5, 6 using the second bearing arrangement 7), and wherein the second bearing arrangement is situated axially outside the partial engagement on the drive shaft (see figure, wherein the second bearing arrangement 7 is situated axially outside of the partial engagement of 12 and 15 on the drive shaft 5, 6).
Regarding claim 19, Poletuchij discloses the drive shaft (5, 6) extends axially from a drive side of the strain wave gear (left side in the figure), the drive side is positioned axially next to the partial engagement (engagement of 12 and 15) on a first side (left side of the engagement in the figure), to an output side of the strain wave gear (right side in the figure), the output side is positioned axially next to the partial engagement on a second side (right side of the engagement in the figure) facing away from the first side, and the output shaft (2 and the flange between 2 and 15) is supported on the drive shaft using the second bearing arrangement (7) on the output side (see figure).
Regarding claim 20, Poletuchij discloses the output shaft (2 and the flange between 2 and 15) is supported on the drive shaft (5, 6) using the second bearing arrangement (7) designed as a roller bearing (it is well known in the art that the symbol used to designate bearing 7 is used to designate a roller bearing; see Applicant’s provided art DD 233401 A1 which uses the same symbol and discloses ball bearings).
Regarding claim 21, Poletuchij discloses the second bearing arrangement (7) has at least two rows (see figure).
Regarding claim 27, Poletuchij discloses the wave generator (9) comprises an elliptical disk (see annotated figure below, B) arranged on the drive shaft (5, 6) and a roller bearing (see annotated figure below, C) of the second bearing arrangement via which the elliptical disk deforms the external gear wheel (15) to produce the partial engagement (partial engagement between 12 and 15) when rotating about a common axis of rotation of the drive shaft and the output shaft (see annotated figure below, D).
Regarding claim 28, Poletuchij discloses the roller bearing has a flexible outer ring and an inner ring is formed by the elliptical disk, or the roller bearing (see annotated figure below, C) has a flexible inner ring and a flexible outer ring (see annotated figure below, wherein C is shown to have an inner ring and an outer ring. The inner ring and outer ring of a wave generator are inherently flexible, otherwise the shape of the elliptical disk would not allow for the partial engagement of the external gear and the internal gear).
Regarding claim 29, Poletuchij discloses the first bearing arrangement (17, 18) is situated in the housing (16) in which the drive shaft (5, 6) is mounted (see figure).
Regarding claim 30, Poletuchij discloses the output shaft (2 and the flange between 2 and 15) is free from the first bearing arrangement in the housing (3).
Regarding claim 32, Poletuchij discloses a rotor of an electric motor (4, inherent feature of electric motors) is arranged on the drive shaft (5, 6), and a stator of the electric motor (inherent feature of electric motors) is arranged in the housing (16).
Regarding claim 33, Poletuchij discloses the drive shaft (5, 6) is at least substantially cylindrical or stepped cylindrical (see figure), and the output shaft (2 and the flange between 2 and 15) is at least substantially hollow cylindrical with a connected flange (flange between 2 and 15).
Regarding claim 34, Poletuchij discloses an actuator (see figure) comprising: a strain wave gear (see figure; see NPL of 05/05/2025 Description line 3, wherein a wave gear is disclosed) comprising: a drive shaft (5, 6) mounted in a housing (16); and an output shaft (2 and the flange between 2 and 15); a first bearing arrangement (17, 18) supporting the drive shaft but not the output shaft (see figure, wherein 17,18 support drive shaft 5, 6 via 3, 4 but does not support the output shaft 2 and the flange between 2 and 15); a second bearing arrangement (7) supporting the output shaft on the drive shaft (see figure, wherein 7 supports 2 and the flange between 2 and 15 on drive shaft 5, 6); a flexible external gear wheel (12) connected to the drive shaft (see figure, wherein 12 is connected to 5, 6 via 14 and 4) and a rigid internal gear wheel (15) connected to the output shaft (see figure, wherein 15 is connected to 2 and the flange between 2 and 15 via unlabeled bolts); and a wave generator (9) that engages the flexible external gear wheel from a radially inward direction of the flexible external gear wheel (see figure, wherein 9 engages 12 from a radially inward direction of 12), to establish a partial engagement of the flexible external gear wheel with the rigid internal gear wheel over a circumference of the flexible external gear wheel and to move the partial engagement in a circumferential direction (see figure; inherent operation of a strain wave gear); wherein the output shaft is supported coaxially by the drive shaft using the second bearing arrangement (see figure, wherein the output shaft 2 and the flange between 2 and 15 is supported coaxially by the drive shaft 5, 6 using the second bearing arrangement 7), and wherein the second bearing arrangement is situated axially outside the partial engagement on the drive shaft (see figure, wherein the second bearing arrangement 7 is situated axially outside of the partial engagement of 12 and 15 on the drive shaft 5, 6).
Regarding claim 35, Poletuchij discloses the actuator is part of a robot (see attached English translation, wherein a manipulator with connected links which make a relative spatial movement is disclosed).
Regarding claim 36, Poletuchij discloses the drive shaft (5, 6) extends axially from a drive side of the strain wave gear (left side in the figure), the drive side is positioned axially next to the partial engagement (engagement of 12 and 15) on a first side (left side of the engagement in the figure), to an output side of the strain wave gear (right side in the figure), the output side is positioned axially next to the partial engagement on a second side (right side of the engagement in the figure) facing away from the first side, and the output shaft (2 and the flange between 2 and 15A) is supported on the drive shaft using the second bearing arrangement (7) on the output side (see figure).
Regarding claim 37, Poletuchij discloses the output shaft (2 and the flange between 2 and 15) is supported on the drive shaft (5, 6) using the second bearing arrangement (7) designed as a roller bearing (it is well known in the art that the symbol used to designate bearing 7 is used to designate a roller bearing; see Applicant’s provided art DD 233401 A1 which uses the same symbol and discloses ball bearings).
Claim(s) 18-20 and 27-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bruns (US 4784014 A).
Regarding claim 18, Bruns discloses a strain wave gear (see figure) comprising: a drive shaft (36) mounted in a housing (10, 12); and an output shaft (40); a first bearing arrangement (44) supporting the drive shaft but not the output shaft; a second bearing arrangement (bearing between 36 and 40) supporting the output shaft on the drive shaft; a flexible external gear wheel (50) connected to the drive shaft and a rigid internal gear wheel (60) connected to the output shaft; and a wave generator (46, 48) that engages the flexible external gear wheel from a radially inward direction of the flexible external gear wheel, to establish a partial engagement of the flexible external gear wheel with the rigid internal gear wheel over a circumference of the flexible external gear wheel and to move the partial engagement in a circumferential direction (inherent operation of a strain wave gear); wherein the output shaft is supported coaxially by the drive shaft using bearing arrangement, and wherein the second bearing arrangement is situated axially outside the partial engagement on the drive shaft (see figure).
Regarding claim 19, Bruns discloses the drive shaft (36) extends axially from a drive side of the strain wave gear (upper side in the figure), the drive side is positioned axially next to the partial engagement on a first side (upper side in the figure), to an output side of the strain wave gear (lower side in the figure), the output side is positioned axially next to the partial engagement on a second side facing away from the first side (lower side in the figure), and the output shaft (40) is supported on the drive shaft using the second bearing arrangement (bearing between 36 and 40) on the output side (see figure).
Regarding claim 20, Bruns discloses the output shaft (40) is supported on the drive shaft (36) using the second bearing arrangement (bearing between 36 and 40) designed as a roller bearing (see figure).
Regarding claim 27, Bruns discloses the wave generator (46, 48) comprises an elliptical disk (46) arranged on the drive shaft (36) and a roller bearing (46) of the second bearing arrangement via which the elliptical disk deforms the external gear wheel (50) to produce the partial engagement when rotating about a common axis of rotation of the drive shaft and the output shaft (40).
Regarding claim 28, Bruns discloses the roller bearing (46) has a flexible outer ring and an inner ring is formed by the elliptical disk, or the roller bearing has a flexible inner ring and a flexible outer ring (inherent disclosure of a wave generator).
Regarding claim 29, Bruns discloses the first bearing arrangement (44) is situated in the housing (10, 12) in which the drive shaft (36) is mounted (see figure).
Regarding claim 30, Bruns discloses the output shaft (40) is free from the first bearing arrangement (44) in the housing (10, 12).
Regarding claim 31, Bruns discloses the output shaft (40) is sealed against the housing (10, 12) with a seal (see figure, seal between 40 and 12).
Regarding claim 32, Bruns discloses a rotor (34) of an electric motor (32) is arranged on the drive shaft (36), and a stator of the electric motor (not shown) is arranged in the housing (10, 12).
Regarding claim 33, Bruns discloses the drive shaft (36) is at least substantially cylindrical or stepped cylindrical (see figure), and the output shaft (40) is at least substantially hollow cylindrical (see figure) with a connected flange (flange of 40).
Regarding claim 34, Bruns discloses an actuator comprising: a strain wave gear (see figure) comprising: a drive shaft (36) mounted in a housing (10, 12); and an output shaft (40); a first bearing arrangement (44) supporting the drive shaft but not the output shaft; a second bearing arrangement (bearing between 36 and 40) supporting the output shaft on the drive shaft; a flexible external gear wheel (50) connected to the drive shaft and a rigid internal gear wheel (60) connected to the output shaft; and a wave generator (46) that engages the flexible external gear wheel from a radially inward direction of the flexible external gear wheel, to establish a partial engagement of the flexible external gear wheel with the rigid internal gear wheel over a circumference of the flexible external gear wheel and to move the partial engagement in a circumferential direction (inherent operation of a strain wave gear); wherein the output shaft is supported coaxially by the drive shaft using bearing arrangement, and wherein the second bearing arrangement is situated axially outside the partial engagement on the drive shaft (see figure).
Regarding claim 35, Bruns discloses the actuator is part of a robot (see Abstract, wherein a robot joint is disclosed).
Regarding claim 36, Bruns discloses the drive shaft (36) extends axially from a drive side of the strain wave gear (upper side in the figure), the drive side is positioned axially next to the partial engagement on a first side (upper side in the figure), to an output side of the strain wave gear (lower side in the figure), the output side is positioned axially next to the partial engagement on a second side facing away from the first side (lower side in the figure), and the output shaft (40) is supported on the drive shaft using the second bearing arrangement (bearing between 36 and 40) on the output side (see figure).
Regarding claim 37, Bruns discloses the output shaft (40) is supported on the drive shaft (36) using the second bearing arrangement (bearing between 36 and 40) designed as a roller bearing (see figure).
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.
Claim 22-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poletuchij (SU 882735 A1) in view of NTN.
Regarding claim 22, Poletuchij fails to disclose the bearing arrangement has an X-arrangement. However, NTN teaches the second bearing arrangement has an X-arrangement (see page 4, x-arrangement). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Poletuchij with an x-arrangement of the bearing, as taught by NTN, to accommodate partial axial loads and heavy radial loads while allowing for greater tolerance of mounting errors or shaft deflection.
Regarding claim 23, Poletuchij fails to disclose the bearing arrangement has an O-arrangement. However, NTN teaches the second bearing arrangement has an O-arrangement (see page 3, o-arrangement). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Poletuchij with an o-arrangement of the bearing, as taught by NTN, to provide high rigidity and stability by preloading the bearings, while also being particularly useful when the bearings need to withstand high loads and maintain accuracy.
Regarding claim 24, Poletuchij fails to disclose the second bearing arrangement comprises a fixed bearing and a floating bearing. However, NTN teaches the second bearing arrangement comprises a fixed bearing and a floating bearing (see page 2, fixed/floating bearing arrangement). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Poletuchij with a fixed bearing and a floating bearing, as taught by NTN, to provide one bearing that prevents axial movement of the shaft in relation to the housing and to provide another bearing which allows axial movement of the shaft to compensate for thermal expansion and manufacturing tolerances (see page 2, fixed/floating bearing arrangement). Poletuchij in view of NTN fail to disclose the fixed bearing is arranged on a side of the floating bearing axially facing away from the partial engagement. However, given the finite number of solutions, i.e., the fixed bearing arranged on the side of the floating bearing axially facing away from the partial arrangement, or the fixed bearing arranged on the side of the floating bearing axially facing toward the partial arrangement, it would have been obvious to one having ordinary skill in the art to try both arrangements.
Regarding claim 25, Poletuchij discloses bearing inner rings or bearing outer rings of the at least two rows (7) of the second bearing arrangement are clamped against one another in an axial direction (see figure). The combination of claim 24 elsewhere above would necessarily result in the following limitations: elastically clamped (NTN, page 2, definition of fixed/floating bearing arrangement, wherein axial displacement occurs in the housing; in other words, the bearings are clamped against each other and flexible within the housing which is an inherent property of fixed/floating bearing pair).
Claim 31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poletuchij (SU 882735 A1) in view of Maurischat (DD 233401 A1).
Regarding claim 31, Poletuchij fails to disclose the output shaft is sealed against the housing with a seal. However, Maurischat teaches the output shaft (see Fig. 2, 10) is sealed against the housing (13) with a seal (14). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Poletuchij with the output shaft sealed against the housing, as taught by Maurischat, to prevent dust and/or debris from entering the housing and causing damage to the internal parts of the strain wave gear while also preventing lubricant from leaking from the strain wave gear.
Claim 21-25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bruns (US 4784014 A) in view of NTN.
Regarding claim 21, Bruns fails to disclose the second bearing arrangement has at least two rows. However, NTN teaches the second bearing arrangement has at least two rows (see page 2, figure). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Bruns with the second bearing arrangement having at least two rows, as taught by NTN, to provide a fixed and a floating bearing so that one bearing that prevents axial movement of the shaft in relation to the housing and to provide another bearing which allows axial movement of the shaft to compensate for thermal expansion and manufacturing tolerances (see page 2, fixed/floating bearing arrangement).
Regarding claim 22, Bruns fails to disclose the second bearing arrangement has an X-arrangement. However, NTN teaches the bearing arrangement has an X-arrangement (see page 4, x-arrangement). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Bruns with an x-arrangement of the bearing, as taught by NTN, to accommodate partial axial loads and heavy radial loads while allowing for greater tolerance of mounting errors or shaft deflection.
Regarding claim 23, Bruns fails to disclose the second bearing arrangement has an O-arrangement. However, NTN teaches the bearing arrangement has an O-arrangement (see page 3, o-arrangement). It would have been obvious to one having ordinary skill in the art as of the effective filing date to modify Bruns with an o-arrangement of the bearing, as taught by NTN, to provide high rigidity and stability by preloading the bearings, while also being particularly useful when the bearings need to withstand high loads and maintain accuracy.
Regarding claim 24, the combination of claim 21 elsewhere above would necessarily result in the following limitations: the second bearing arrangement comprises a fixed bearing and a floating bearing (NTN, see page 2, fixed/floating bearing arrangement). Bruns in view of NTN fail to disclose the fixed bearing is arranged on a side of the floating bearing axially facing away from the partial engagement. However, given the finite number of solutions, i.e., the fixed bearing arranged on the side of the floating bearing axially facing away from the partial arrangement, or the fixed bearing arranged on the side of the floating bearing axially facing toward the partial arrangement, it would have been obvious to one having ordinary skill in the art to try both arrangements.
Regarding claim 25, Bruns fails to disclose bearing inner rings or bearing outer rings of the at least two rows of the second bearing arrangement are elastically clamped against one another in an axial direction. However, NTN teaches bearing inner rings or bearing outer rings of the at least two rows of the second bearing arrangement are elastically clamped against one another in an axial direction (NTN, page 2, definition of fixed/floating bearing arrangement, wherein axial displacement occurs in the housing; in other words, the bearings are clamped against each other and flexible within the housing which is an inherent property of fixed/floating bearing pair).
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1 - SU 882735 A1 Annotated Figure
Response to Arguments
Applicant's arguments filed 12/09/2025 have been fully considered but they are not persuasive. The Examiner notes that the arguments are directed toward the 1.132 declaration that was submitted, and the response to the declaration is made above.
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.
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/JOSEPH BROWN/Primary Examiner, Art Unit 3618