DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
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.
Claim 2 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.
Claim 2 recites limitations which are repetitive to the amended limitations of Claim 1.
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 § 103
Claims 1-3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Garrone et al. (EP 0547007), in view of Mills et al. (US 2004/0055404).
The combination is summarized as follows:
Garrone discloses a barrel cam actuator with a barrel cam actuated by a sun/planet reducer (14, 15) driven by a hydraulic system (34, 24).
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Mills teaches a strain wave gearing device (12, 18, 20, 24) actuated by an electric motor (14), which provides the expected benefit of a simple, cost-effective means of achieving a high reduction ratio in a compact space.
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Therefore, it would have been obvious to one of ordinary skill in the art prior to the time of effective filing to replace the sun/planet reducer and hydraulic system of Garrone with the strain-wave gearing device and electric motor of Mills, for the expected advantage of achieving a high reduction ratio in a compact space using a simple, cost-effective means.
The combination, as motivated above, meets the claimed limitations as follows:
1. (Original) A barrel cam actuator assembly, comprising: a barrel cam (Garrone: 7) including a first track (Garrone: 10); a strain wave gearing device (Mills: 12, 18, 20, 24) that is arranged coaxial to the barrel cam (Garrone: fig. 1) and rotationally coupled to the barrel cam, wherein an output shaft of the strain wave gearing device is rotationally coupled to the barrel cam via an attachment device (as combined, the strain wave gearing device and electric motor of Mills replaces the sun/planet reducer and hydraulic system of Garrone; therefore, the output of Mills’ system is necessarily coupled to the barrel cam of Garrone in order for the combination to function); and an electric motor (Mills: 14) rotationally coupled to the strain wave gearing device (Mills: fig. 1) and configured to selectively rotate the strain wave gearing device; and a housing (Garrone: 3) enclosing a portion of the barrel cam (Garrone: 7), the strain wave gearing device, and the electric motor (as combined, the strain wave gearing device and electric motor of Mills replaces the sun/planet reducer and hydraulic system of Garrone); wherein the barrel cam (Garrone: 7) includes a hollow interior section (Garrone: fig. 1 clearly shows the claimed configuration) that at least partially encloses a flexible inner spline in the strain wave gearing device (as combined, the strain wave gearing device and electric motor of Mills replaces the sun/planet reducer and hydraulic system of Garrone); and wherein the strain wave gearing device includes an outer spline (Mills: 24), a flexible inner spline (Mills: 20) that meshes with the outer spline, and an elliptical wave generator (Mills: 12).
2. (Original) The barrel cam actuator assembly of claim 1, wherein: the barrel cam (Garrone: 7) includes a hollow interior section (Garrone: fig. 1); and at least a portion of a flexible inner spline (Mills: 20) of the strain wave gearing device is positioned within the hollow interior section (i.e., the strain wave gearing device of Mills replaces the gearing 14, 15 of Garrone).
3. (Original) The barrel cam actuator assembly of claim 1, wherein the barrel cam (Garrone: 7) includes a second track (Garrone: also 10) and the barrel cam actuator assembly further comprises a first cam follower and a second cam follower (Garrone: each 11) mated with the first track and the second track (Garrone: each 10).
5. (Original) The barrel cam actuator assembly of claim 1, further comprising an angular position sensor (Garrone: 17) coupled to the barrel cam (Garrone: 7) and configured to send data indicative of barrel cam position to a controller (Garrone: 19).
Claims 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Garrone et al. (EP 0547007) and Mills et al. (US 2004/0055404), in view of (JP H0625627).
7. (Original) The barrel cam actuator assembly of claim 1, further comprising a shift fork (Garrone: 5) coupled to a rod (Garrone: 6). However, the prior art does not explicitly disclose the means of coupling the mapped elements. JP teaches the known use of a circlip (7) for coupling respective mechanical elements. Therefore, it would have been obvious to one of ordinary skill in the art prior to the time of filing to use a circlip, such as taught by JP, as the means for coupling Garrone’s shift fork to the rod, for the expected benefit of a simple mechanical means of fastening with low production costs and/or that allows repairability.
8. (Original) The barrel cam actuator assembly of claim 7, further comprising a cam follower (Garrone: tip of 11 as shown in fig. 2) including a first end positioned within one track (Garrone: 10) and a second end positioned within (Garrone: fig. 2) the shift fork (Garrone: 5, including 11), but does not explicitly disclose via a bearing. JP teaches the use of a roller bearing (3). It would have been obvious to one of ordinary skill in the art prior to the time of effective filing to use the bearing as taught by JP in combination with the structure of Garrone, for the expected advantage of reduced friction, as well-known in the mechanical arts.
Regarding claim 9, JP does not explicitly teach that the roller bearing is a needle roller bearing. Note that the officially noticed fact “that needle roller bearings were old, well-known, and commonly used in the art to reduce friction in a system, especially when size is a design constraint” is hereby taken to be admitted prior art, since Applicant’s subsequent response of 11/26/2025 did not adequately traverse the official notice by specifically pointing out why the noticed fact was not considered to be common knowledge or well-known in the art in accordance with MPEP 2144.03(C). The selection of a specific bearing-type, such as a needle roller bearing, appropriate for a given intended use and/or size constraint was routine in the art and only required routine skill in the art. Therefore, the selection and/or use of a needle roller bearing in the combination would have been obvious to one of ordinary skill in the art prior to the time of effective filing, e.g. by providing the well-known advantage of reducing friction and/or allowing a compact configuration.
10. (Original) The barrel cam actuator assembly of claim 8, wherein the shift fork (Garrone: 5) is coupled to a dog clutch (Garrone: 4) or a synchronizer.
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
First, Applicant has argued that the “proposed combination of Garrone and Mills is improper due to the fact that the proposed combination would render Garrone unfit for its intended purpose” (Remarks, page 8, second paragraph). This is not persuasive. Even if an express motivation to combine were absent, the combination of the prior art would have been obvious to an ordinary practitioner since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable,1 especially since changing of gear-types was a matter of mere routine skill in the art.
Second, Applicant has argued with regards to the Official Notice that “this design choice assertion is improper” (Remarks, page 11, first paragraph). This is not persuasive. First, the Official Notice is regarding needle roller bearings being old and well-known for reducing friction, especially when size is a constraint on the design. In other words, it is old and well-known that needle roller bearings reduce friction and are compact. Thereafter, the rejection asserts that the combination of the prior art with such well-known bearings would have been obvious, and provide predictable results. The Official notice does not rely on “design choice,” as argued. Second, Applicant’s arguments do not adequately traverse the official notice by specifically pointing out why the noticed fact was not considered to be common knowledge or well-known in the art in accordance with MPEP 2144.03(C). Although not explicitly argued by Applicant, the Examiner notes that it is beyond dispute that “needle roller bearings were old, well-known, and commonly used in the art to reduce friction in a system, especially when size is a design constraint” as asserted. For example, see DE 4220515, published 1993: “Needle roller bearings with a needle cage are used to a large extent in motor vehicle construction and in industrial mechanical engineering because of their low weight and their compact structure”; or CN 1074517, also published 1993: “the needle roller bearing has advantages of compact structure, light weight, long service life and so on, so its application is wide, yield is continuously expanded [sic].”
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 T. S. FIX whose telephone number is (571)272-8535. The examiner can normally be reached M-Th 10a-3p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Minnah Seoh can be reached at 5712707778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T. SCOTT FIX/Primary Examiner, Art Unit 3618
1 KSR International Co. v. Teleflex Inc., 82 USPQ2d 1385 (2007)