Prosecution Insights
Last updated: April 19, 2026
Application No. 18/795,257

ACTUATOR

Non-Final OA §102§103
Filed
Aug 06, 2024
Examiner
PRATHER, GREGORY T
Art Unit
3618
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Sumitomo Heavy Industries, Ltd.
OA Round
1 (Non-Final)
69%
Grant Probability
Favorable
1-2
OA Rounds
2y 11m
To Grant
89%
With Interview

Examiner Intelligence

Grants 69% — above average
69%
Career Allow Rate
360 granted / 525 resolved
+16.6% vs TC avg
Strong +20% interview lift
Without
With
+20.5%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
21 currently pending
Career history
546
Total Applications
across all art units

Statute-Specific Performance

§101
1.6%
-38.4% vs TC avg
§103
33.7%
-6.3% vs TC avg
§102
32.5%
-7.5% vs TC avg
§112
29.9%
-10.1% vs TC avg
Black line = Tech Center average estimate • Based on career data from 525 resolved cases

Office Action

§102 §103
DETAILED ACTION 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 . Election/Restrictions Applicant’s election without traverse of Species 1 (shown in Figs. 1 & 2) in the reply filed on 12/16/2025 is acknowledged. Specification The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. 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 (i.e., changing from AIA to pre-AIA ) 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)(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) 1, 2, and 6 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Takeshi (JP2021078194, cited by Applicant). Takeshi discloses: Re claim 1. An actuator comprising: a motor (40) and a speed reducer (60) that are connected to each other, wherein a heat transfer member (70) having elasticity (the heat transfer member 70 is made of physical matter and so necessarily has an elasticity. The claim does not specify what the level of elasticity is) is disposed between a coil end (45; see para. [0029]) of the motor and a speed reducer casing (20) of the speed reducer. Re claim 2. The actuator according to claim 1, wherein the speed reducer casing (20) is connected to a mating member (10) (para. [0017]-[0032]; Figs. 1-3). Re claim 6. The actuator according to claim 1, wherein the coil end (45) is molded with resin (para. [0023]), and the heat transfer member (70) is sandwiched between the resin for molding the coil end (45) and the speed reducer casing (20). Claim(s) 1 and 4 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Reisch (US2024/0376971). Takeshi discloses: Re claim 1. An actuator comprising: a motor (including stator 19 and rotor 21) and a speed reducer (transmission 1) that are connected to each other, wherein a heat transfer member (9) having elasticity (the heat transfer member 9 is made of physical matter and so necessarily has an elasticity. The claim does not specify what the level of elasticity is) is disposed between a coil end (an end of stator 19) of the motor and a speed reducer casing (34) of the speed reducer. Re claim 4. The actuator according to claim 1, wherein the speed reducer includes a retaining plate (2a) that is disposed inside the speed reducer casing (34) and that restricts axial movement of a gear member (3) (See Figs. 1-2), and the heat transfer member (9) is in contact with the speed reducer casing (34) and the retaining plate (2a) (See Figs. 1-2). Claim Rejections - 35 USC § 103 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 (i.e., changing from AIA to pre-AIA ) 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 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(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeshi (JP2021078194, cited by Applicant) in view of Manabu (JP2000116063, cited by Applicant). Re claim 3 Takeshi discloses the heat transfer member (70) is sandwiched between the coil end (45) and the speed reducer casing (20), but is silent to the heat transfer member being in a compressed state compared to a state before assembly. Manabu teaches the heat transfer member (17) being in a compressed state compared to a state before assembly (para. [0011]-[0013]; Fig. 1), for the purpose of improving heat transmission (abstract). It would have been obvious to a person having ordinary skill in the art at the time of filing/invention to modify the device of Takeshi such that the heat transfer member being in a compressed state compared to a state before assembly, as taught by Manabu, with a reasonable expectation of success, for the purpose of improving heat transmission. Claim(s) 1, 2, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moritani (US2019/0131846 cited by Applicant; corresponding to JP201988046 cited by Applicant) in view of Takeshi (JP2021078194, cited by Applicant). Re claim 1 Moritani discloses an actuator comprising: a motor (10) and a speed reducer (40) that are connected to each other, a coil end (13a) of the motor and a speed reducer casing (18) of the speed reducer (40). Moritani does not disclose a heat transfer member having elasticity is disposed between the coil end of the motor and the speed reducer casing of the speed reducer. Moritani teaches a heat transfer member (70) having elasticity (the heat transfer member 70 is made of physical matter and so necessarily has an elasticity. The claim does not specify what the level of elasticity is) is disposed between the coil end (45; see para. [0029]) of the motor and the speed reducer casing (20) of the speed reducer, for the purpose of improving cooling performance (para. [0009[). It would have been obvious to a person having ordinary skill in the art at the time of filing/invention to modify the device of Moritani such that a heat transfer member having elasticity is disposed between the coil end of the motor and the speed reducer casing of the speed reducer, as taught by Takeshi, with a reasonable expectation of success, for the purpose of improving cooling performance. Moritani as modified above further suggests: Re claim 2 wherein the speed reducer casing (20 in Takeshi) is connected to a mating member (10 in Takeshi) (para. [0017]-[0032]; Figs. 1-3 in Takeshi). Re claim 6 wherein the coil end (45 in Takeshi) is molded with resin (para. [0023] in Takeshi), and the heat transfer member (70 in Takeshi) is sandwiched between the resin for molding the coil end (45 in Takeshi) and the speed reducer casing (20 in Takeshi). Claim(s) 3, 7, and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moritani (US2019/0131846 cited by Applicant; corresponding to JP201988046 cited by Applicant) in view of Takeshi (JP2021078194, cited by Applicant), and further in view of Manabu (JP2000116063, cited by Applicant). Re claim 3 Moritani as modified above further suggests the heat transfer member (70 in Takeshi) is sandwiched between the coil end (45 in Takeshi; 13a in Moritani) and the speed reducer casing (20 in Takeshi; 18 in Moritani), but is silent to the heat transfer member being in a compressed state compared to a state before assembly. Manabu teaches the heat transfer member (17) being in a compressed state compared to a state before assembly (para. [0011]-[0013]; Fig. 1), for the purpose of improving heat transmission (abstract). It would have been obvious to a person having ordinary skill in the art at the time of filing/invention to further modify the device of Moritani such that the heat transfer member being in a compressed state compared to a state before assembly, as taught by Manabu, with a reasonable expectation of success, for the purpose of improving heat transmission. Re claim 7 Moritani as modified above further suggests wherein the motor includes another coil end (other of 13a) on a side opposite to a speed reducer side (40), and a cover member (10 in Takeshi) disposed on a counter-speed reducer side with respect to the coil end, but is silent to another heat transfer member having elasticity is disposed between the other coil end and the cover member. Manabu teaches another heat transfer member (other of 17) having elasticity is disposed between the other coil end (other end of 11) and the cover member (10) disposed on the counter-speed reducer side with respect to the coil end, for the purpose of improving cooling performance (better cooling achieved by cooling both ends of the coil as taught by Manbu). It would have been obvious to a person having ordinary skill in the art at the time of filing/invention to further modify the device of Moritani further such that another heat transfer member having elasticity is disposed between the other coil end and the cover member disposed on the counter-speed reducer side with respect to the coil end, as taught by Manabu, with a reasonable expectation of success, for the purpose of improving cooling performance. Re claim 8 Moritani as modified above further suggests wherein the heat transfer member (70 in Moritani, 17 and 17 in Manabu) has higher heat transfer performance than the other heat transfer member (See Fig. 1 of Moritani, because the taught heat transfer member added to the right of right coil 13a is closer to ambient air than the taught heat transfer member added to the left of left coil 13a, the heat transfer member arrangement on the left will tend to transfer heat to a higher temperature area than the heat transfer member on the right, and therefore the heat transfer member on the left will tend to perform heat transfer at a higher temperature (i.e. more heat).). Claim(s) 9-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takeshi (JP2021078194, cited by Applicant) in view of Fukasawa (US2021/0404525). Re claim 9 Takeshi discloses all claim dependency limitations, see above, but does not disclose a brake disposed on a counter-output side with respect to the motor; and a circuit section disposed on the counter-output side with respect to the brake. Fukasawa teaches a brake (14) disposed on a counter-output side (compared to speed reducer 15) with respect to the motor (12); and a circuit section (18) disposed on the counter-output side with respect to the brake, for the purpose of braking the motor (abstract). It would have been obvious to a person having ordinary skill in the art at the time of filing/invention to modify the device of Takeshi such that a brake disposed on a counter-output side with respect to the motor; and a circuit section disposed on the counter-output side with respect to the brake, as taught by Fukasawa, with a reasonable expectation of success, for the purpose of braking the motor. Takeshi as modified further suggests: Re claim 10. The actuator according to claim 9, wherein the brake (14) includes a hub member, and a rotor, and the hub member (14a) is fixed to a rotary shaft (13) that extends from the motor to an inside of the brake, and the rotor is connected to the hub member (para. [0040]). Re claim 11. The actuator according to claim 10, wherein the brake (14) further includes an armature (14c; para. [0040]), a plate (14e), and a frame (14g), and the armature (14c) is disposed on an output side of the rotor and is supported to be displaceable in an axial direction such that the armature comes into contact with and separate from the rotor, and the plate (14e) is disposed on a counter-output side of the rotor and is supported by the frame (14g). Re claim 12. The actuator according to claim 11, wherein a movable friction material is provided on a surface of the armature (14c) that faces the rotor in the axial direction, and a fixed friction material is provided on a surface of the plate (14e) that faces the rotor in the axial direction (para. [0042] - “lining (abrasion material)”). Re claim 13. The actuator according to claim 12, wherein the brake (14) further includes an electromagnetic coil (14d; para. [0040]), and the electromagnetic coil (14d) moves the armature (14c) in the axial direction by a magnetic force generated by energization, and brings the movable friction material into contact with and away from the rotor (para. [0040]). Re claim 14. The actuator according to claim 9, wherein the circuit section (18) includes a rotation detection unit (18; para. [0037]) that detects a rotation of a rotary shaft (13). Allowable Subject Matter Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: In regards to claim 5, the closest prior art is Reisch (US2024/0376971; relied upon hereinabove). While Reisch discloses all claim dependency limitations, see rejection(s) above, Reisch does not disclose the additional limitation of wherein compression of the heat transfer member (9) between the coil end and the retaining plate is weaker than compression of the heat transfer member between the coil end and the speed reducer casing, in combination with all other claim limitations. Reisch appears to teach away from this additional limitation in paragraph [0059]-[0060], since the torque transmitted between the heat transfer member (9 is part of 11) and the speed reducer casing (34) is reduced. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to GREGORY T PRATHER whose telephone number is (571)270-5412. The examiner can normally be reached Monday-Thursday 9 AM - 5 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, Minnah Seoh can be reached at 571-270-7778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /GREGORY T PRATHER/ Examiner, Art Unit 3618 /MINNAH L SEOH/Supervisory Patent Examiner, Art Unit 3618
Read full office action

Prosecution Timeline

Aug 06, 2024
Application Filed
Feb 11, 2026
Non-Final Rejection — §102, §103 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
69%
Grant Probability
89%
With Interview (+20.5%)
2y 11m
Median Time to Grant
Low
PTA Risk
Based on 525 resolved cases by this examiner. Grant probability derived from career allow rate.

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