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 .
Status of Claims
This Final Office Action is in response to the amendment filed on September 16th, 2026 for application no. 18/796,340 filed on August 7th, 2024. Claims 1-20 are pending. In the present amendment, claims 2-3, 8, 11-13 and 19 are amended.
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 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.
Claims 1-2, 6, 8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Muehlberger (DE 198 60 618). See translation provided by Applicant with the IDS filed September 18th, 2024.
Regarding Claim 1, Muehlberger teaches an electric drive system (see Fig. 1) in a battery electric vehicle (see Fig. 2), comprising:
an output shaft (“first side shaft” 12), configured to couple with a drive wheel of the BEV (see Fig. 2), having a face gear (“first axle shaft bevel gear” 14) at a distal end (innermost axial end of 12);
a differential (“differential” 6), including a reduced diameter pinion gear cage (“differential housing” 7) receiving reduced axial length pinion gears (“differential bevel gears” 8 and 9) rotatably connected to the reduced diameter pinion gear cage (7) via gear pins (“shafts” 10 and 11); and
a housing (“central carrier disk” 20) that receives the differential (6) having an outer surface (see Fig. 1) that is configured to couple to a rotating electrical machine (“rotor” 2 and “stator” 3) of the BEV,
wherein the reduced axial length pinion gears (8, 9) engage the face gear (14) and permit angular displacement of the output shaft (12) relative to another output shaft (“second side shaft” 13).
Regarding Claim 2, Muehlberger teaches the electric drive system recited in claim 1,
wherein a rotor (Fig. 1, 2) of the rotating electrical machine (2, 3) concentrically receives the housing (20).
Regarding Claim 6, Muehlberger teaches the electric drive system recited in claim 1,
further comprising bearings (Fig. 1, “bearing arrangements” 17, 18) positioned between an outer surface of the output shaft (12) and the housing (20; see Fig. 1).
Regarding Claim 8, Muehlberger teaches the electric drive system recited in claim 1,
wherein an axial length (l) of the reduced axial length pinion gears (Fig. 1, 8, 9) is less than a diameter (d) of the reduced axial length pinion gears (8, 9; see Fig. 1).
Regarding Claim 10, Muehlberger teaches the electric drive system recited in claim 1,
wherein the reduced axial length pinion gears (Fig. 1; 8, 9) are bevel gears (see Fig. 1).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Muehlberger (DE 198 60 618), in view of Lian (US 2019/0299992), and in view of Woodgears (https://woodgears.ca/gear/ratio.html). See NPL provided by Applicant with the IDS filed September 18th, 2024.
Regarding Claim 3, Muehlberger teaches the electric drive system recited in claim 1.
Muehlberger does not teach “wherein a gear ratio between the drive wheel of the BEV and the output shaft is greater than or equal to eight to one”. In other words, the electric drive system taught by Muehlberger does not comprise a reduction gearbox between the rotating electrical machine (Fig. 1, 2, 3) and the drive wheels (Fig. 2, 37.1, 37.2) of the electric drive system (Fig. 1, 1).
Lian teaches a gear reduction (Fig. 29, “gear reducer” 730) between an electric motor (“driving motor generator” 720) and a drive wheel of the electric drive system (see Fig. 29).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the electric drive system taught by Muehlberger with the reduction gearboxes taught by Lian, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in combining known elements, and have the obvious advantage of expanding the marketability of the electric drive system taught by Muehlberger by providing the electric drive system with different gear ratios suitable for different vehicle applications.
Muehlberger or Lian do not teach “wherein a gear ratio between the drive wheel of the BEV and the output shaft is greater than or equal to eight to one”. In other words, Lian does not explicitly teach a gear ratio.
Woodgears teaches “Determining compound gear ratios (multiple stages) When a gear train has multiple stages, the gear ratio for the overall gearing system is the product of the individual stages. For example, for the gear at left the blue gears are 7 and 21 teeth, while the green gears are 9 and 30 teeth. Thus, the first gear ratio is 7:21 and the second is 9:30. Multiplying the two together gives (7x9):(21x30) = 63:630, which is 1:10. So the big green gear will make 1 turn for every 10 turns of the small blue gear”.
Woodgears explicitly teaches how to calculate gear ratios for multiple stage gear trains like the two-stage reduction gearbox taught by Lian, so it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to contrive any number of desirable gear ratios to expand the marketability of the electric drive system taught by Muehlberger and Lian by providing the electric drive system with different gear ratios suitable for different vehicle applications, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II.A. – Optimization Within Prior Art Conditions or Through Routine Experimentation.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Muehlberger (DE 198 60 618), in view of Zeise (US 6,811,511).
Regarding Claim 7, Muehlberger teaches the electric drive system recited in claim 1.
Muehlberger does not teach “further comprising C clips that axially secure the pinion gear cage and face gear within the housing”. However, the two bearings (Fig. 1, 17, 18) taught by Muhlberger appear to be axially retained by respective retaining rings (see Fig. 1).
Zeise teaches C clips (Figs. 1-2, “axial ring” DIN 472) that axially secure respective face gears (“crown wheels” 5a, 5b) within a housing (“cylindrical casing” 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the retaining rings taught by Muehlberger with the C clips taught by Zeise, such that “further comprising C clips that axially secure the pinion gear cage and face gear within the housing”, as one of ordinary skill in the art would have recognized that the result of the substitution would have been predictable, and have the obvious advantage of axially retaining the pinion gear cage and the face gear taught by Muehlberger. See MPEP 2144.06(II) - Substituting Equivalents Known for the Same Purpose.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Muehlberger (DE 198 60 618), in view of Cross + Morse (https://www.crossmorse.com/images/specifications/bevel-and-mitre-gears.pdf).
Regarding Claim 9, Muehlberger teaches the electric drive system recited in claim 1.
Muehlberger does not teach “wherein a ratio of diameter (d) of the reduced axial length pinion gears to axial length (l) of the reduced axial length pinion gears is at least 3 to 1”.
Cross + Morse teaches a ratio (see example below) of diameter (F) of a reduced axial length pinion gear (see p. 5 of Cross + Morse) to axial length (E-H) of the reduced axial length pinion gears is at least 3 to 1 (see example below; Catalogue No. 1618).
F
E
-
H
=
30.7
18.0
-
8.7
=
3.3
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the pinion gears taught by Muehlberger as suggested by Cross + Morse, such that “wherein a ratio of diameter (d) of the reduced axial length pinion gears to axial length (l) of the reduced axial length pinion gears is at least 3 to 1”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in doing so, and have the obvious advantage of expanding the marketability of the electric drive system taught by Muehlberger by providing different pinion gears suitable for different applications. Furthermore, courts have held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In this case, discovering the optimum pinion gear size for the electric drive system taught by Muehlberger would have been obvious to try. See MPEP 2144.05(II)(A) – “Optimization within Prior Art Conditions or Through Routine Experimentation”.
Claims 11-12, 14, 17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Muhlberger (DE 198 60 618), and in view of Lian (US 2019/0299992).
Regarding Claim 11, Muehlberger teaches an electric drive system (Fig. 1, 1) in a battery electric vehicle (BEV; see Fig. 2), comprising:
an output shaft (Fig. 1, 12), configured to couple with a drive wheel of the BEV (see Fig. 2), having a face gear (Fig. 1, 14) at a distal end (innermost axial end of 12);
a differential (6), including a reduced diameter pinion gear cage (7) receiving reduced axial length pinion gears (8, 9) rotatably connected to the reduced diameter pinion gear cage (7) via gear pins (10, 11);
a housing (20) that receives the differential (6) having an outer surface (see Fig. 1) that is configured to couple to a rotating electrical machine (2, 3) of the BEV (see Fig. 2); and
wherein the reduced axial length pinion gears (8, 9) engage the face gear (14) and permit angular displacement of the output shaft (12) relative to another output shaft (13).
Muehlberger does not teach “one or more reduction gearboxes coupled to the output shaft and configured to couple to the drive wheel of the BEV”.
Lian teaches one or more reduction gearboxes (Fig. 29, 730) coupled to an output shaft (721) and configured to couple to a drive wheel of a BEV (see Fig. 29; see [0076]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the electric drive system taught by Muehlberger with the two-stage reduction gearboxes taught by Lian, such that “one or more reduction gearboxes coupled to the output shaft and configured to couple to the drive wheel of the BEV”, as one of ordinary skill in the art would have recognized that the result of the combination would have been predictable, and have the obvious advantage of expanding the marketability of the electric drive system taught by Muehlberger by providing the electric drive system with different speed ratios suitable for different vehicle applications.
Regarding Claim 12, Muehlberger and Lian teach the electric drive system recited in claim 11,
Muehlberger teaches wherein a rotor (Fig. 1, 2) of the rotating electrical machine (2, 3) concentrically receives the housing (20).
Regarding Claim 14, Muehlberger and Lian teach the electric drive system recited in claim 11,
Lian teaches wherein the one or more reduction gearboxes (Fig. 29, 730) includes a two-stage-reduction gearbox (730).
Regarding Claim 17, Muehlberger and Lian teach the electric drive system recited in claim 11,
Muhlberger teaches further comprising bearings (Fig. 1, 17, 18) positioned between an outer surface of the output shaft (12) and the housing (20; radially between 12 and 20).
Regarding Claim 19, Muehlberger and Lian teach the electric drive system recited in claim 11,
Muehlberger teaches wherein an axial length (l) of the reduced axial length pinion gears (Fig. 1, 8, 9) is less than a diameter (d) of the reduced axial length pinion gears (8, 9; see Fig. 1).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Muehlberger (DE 198 60 618), in view of Lian (US 2019/0299992), and in view of Woodgears (https://woodgears.ca/gear/ratio.html).
Regarding Claim 13, Muehlberger and Lian teach the electric drive system recited in claim 11.
Muehlberger or Lian do not teach “wherein a gear ratio between the drive wheel of the BEV and the output shaft is greater than or equal to eight to one”. In other words, Lian does not explicitly teach a gear ratio.
Woodgears teaches “Determining compound gear ratios (multiple stages) When a gear train has multiple stages, the gear ratio for the overall gearing system is the product of the individual stages. For example, for the gear at left the blue gears are 7 and 21 teeth, while the green gears are 9 and 30 teeth. Thus, the first gear ratio is 7:21 and the second is 9:30. Multiplying the two together gives (7x9):(21x30) = 63:630, which is 1:10. So the big green gear will make 1 turn for every 10 turns of the small blue gear”.
Woodgears explicitly teaches how to calculate gear ratios for multiple stage gear trains like the two-stage reduction gearbox taught by Lian, so it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to contrive any number of desirable gear ratios to expand the marketability of the electric drive system taught by Muehlberger and Lian by providing the electric drive system with different gear ratios suitable for different vehicle applications, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See MPEP 2144.05 II.A. – Optimization Within Prior Art Conditions or Through Routine Experimentation.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Muehlberger (DE 198 60 618), in view of Lian (US 2019/0299992), and in view of Zeise (US 6,811,511).
Regarding Claim 18, Muehlberger and Lian teach the electric drive system recited in claim 11.
Muehlberger or Lian do not teach “further comprising C clips that axially secure the pinion gear cage and face gear within the housing”. However, the two bearings (Fig. 1, 17, 18) taught by Muehlberger appear to be axially retained by respective retaining rings (see Fig. 1).
Zeise teaches C clips (Figs. 1-2, DIN 472) that axially secure respective face gears (5a, 5b) within a housing (3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the retaining rings taught by Muehlberger with the C clips taught by Zeise, such that “further comprising C clips that axially secure the pinion gear cage and face gear within the housing”, as one of ordinary skill in the art would have recognized that the result of the substitution would have been predictable, and have the obvious advantage of axially retaining the pinion gear cage and the face gear taught by Muehlberger. See MPEP 2144.06(II) - Substituting Equivalents Known for the Same Purpose.
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Muehlberger (DE 198 60 618), in view of Lian (US 2019/0299992), and in view of Cross + Morse. (https://www.crossmorse.com/images/specifications/bevel-and-mitre-gears.pdf).
Regarding Claim 20, Muehlberger and Lian teach the electric drive system recited in claim 11.
Muehlberger or Lian do not teach “wherein a ratio of diameter (d) of the reduced axial length pinion gears to axial length (l) of the reduced axial length pinion gears is at least 3 to 1”.
Cross + Morse teaches a ratio (see example below) of diameter (F) of a reduced axial length pinion gear (see p. 5 of Cross + Morse) to axial length (E-H) of the reduced axial length pinion gears is at least 3 to 1 (see example below).
F
E
-
H
=
30.7
18.0
-
8.7
=
3.3
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the size of the pinion gears taught by Muehlberger as suggested by Cross + Morse, such that “wherein a ratio of diameter (d) of the reduced axial length pinion gears to axial length (l) of the reduced axial length pinion gears is at least 3 to 1”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in doing so, and have the obvious advantage of expanding the marketability of the electric drive system taught by Muehlberger by providing different pinion gears suitable for different applications. Furthermore, courts have held that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation”. In this case, discovering the optimum pinion gear size for the electric drive system taught by Muehlberger would have been obvious to try. See MPEP 2144.05(II)(A) – “Optimization within Prior Art Conditions or Through Routine Experimentation”.
Response to Arguments
The Applicant's arguments filed September 16th, 2026 are in response to the Office Action mailed July 7th, 2026. The Applicant's arguments have been fully considered.
Response to Claim Objections
Regarding Claims 2-3, 8, 11-12 and 19, Applicant’s amendment addresses various minor informalities indicated in the previous Office Action. As such, the relevant claim objections are withdrawn.
Double Patenting
Regarding Claims 1-20, the terminal disclaimer filed on September 16th, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12,253,153 has been reviewed and is accepted. The terminal disclaimer has been recorded. As such, the relevant nonstatutory doubling patenting rejections of claims 1-20 are hereby withdrawn.
Regarding Claims 1-6, 8-17 and 19-20, the terminal disclaimer filed on September 16th, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12,492,742 has been reviewed and is accepted. The terminal disclaimer has been recorded. As such, the relevant nonstatutory doubling patenting rejections of claims 1-6, 8-17 and 19-20 are hereby withdrawn.
Response to Claim Rejections - 35 USC § 112
Regarding Claim 13, Applicant’s amendment has clarified the invention. As such, the 112(b) rejection indicated in the previous Office Action is withdrawn.
Response to Claim Rejections - 35 USC § 102 and/or 103
Regarding Claims 1 and 11, Applicant’s argument that “First, independent claim 1 recites a differential that includes the reduced diameter pinion gear cage, the pinion gears, and the gear pins, followed by "a housing that receives the differential having an outer surface that is configured to couple to a rotating electrical machine of the BEV." In the Non-Final Rejection, the Examiner likens differential 6 of Muehlberger to the claimed differential, differential housing 7 of Muehlberger to the claimed pinion gear cage, and central carrier disk 20 of Muehlberger to the claimed housing. This likening requires a showing that disk 20 supplies the receiving relationship with differential 6, including the cage identified as housing 7. Muehlberger describes a different set of component functions. Differential housing 7 contains differential bevel gears 8 and 9 and supports their shafts 10 and 11. Housing 7 is connected in a rotationally fixed manner to rotor 2. Central carrier disk 20 extends substantially radially and carries pole structures 21 and 22 on its opposite end faces. Thus, the Muehlberger identifies housing 7 as the structure receiving the differential gearing, and disk 20 as a rotor carrier connected to that structure. The disclosed connection between disk 20 and housing 7 does not, without further explanation, establish that disk 20 is the claimed housing receiving the differential” (p. 6-7) is not persuasive. Merriam-Webster’s online dictionary defines the term “receive” as “to act as a receptacle” and the term “housing” as “a support (such as a frame) for mechanical parts”. As seen in Fig. 1 of Muehlberger, the central carrier disk (20) clearly acts as a receptacle and a support for the differential (6). Therefore, Muehlberger anticipates the recitation of “a housing that receives the differential” as required by claims 1 and 11. See detailed and relevant rejections presented above.
Regarding Claims 1 and 11, Applicant’s argument that “This distinction follows from the receiving relationship expressly recited in claim 1. The application illustrates that relationship by identifying differential 24 and its pinion gear cage 38 separately from housing 46, which receives the differential and couples at its outer surface to rotor 34. The Applicant does not rely on an unrecited requirement that the housing be a single piece, completely enclose the differential, or have a particular tubular shape. Even under a broader construction, the rejection must identify structure that supplies the claimed receiving relationship. Calling a connected rotor carrier a "housing" does not complete that analysis” (p. 7) is not persuasive. Again, Merriam-Webster’s online dictionary defines the term “housing” as “a support (such as a frame) for mechanical parts”. Examiner believes the term “carrier” is synonymous to the term “housing” in light of this definition as the carrier (Fig. 1, 20) taught by Muehlberger serves as a support for the differential (6). See detailed and relevant rejections presented above.
Regarding Claims 1 and 11, Applicant’s argument that “Nor does treating housing 7 and disk 20 collectively as a housing resolve the mapping without further analysis. Housing 7 is already relied upon as the cage included in the differential that the claimed housing receives” (p. 7) is not persuasive and it is generally unclear where Applicant would get that impression based on the previous Office Action. In order to clarify the record, Examiner mapped the recited “housing” to the central carrier disk (Fig. 1, 20) and the recited “reduced diameter pinion gear cage” to the compensation housing disclosed by Muehlberger.
Regarding Claims 1 and 11, Applicant’s argument that “Muehlberger's separately identified housing 4 also does not validate the existing mapping because housing 4 surrounds the rotor and stator assembly, whereas disk 20 is a rotating rotor member” (p. 7) is not persuasive as claims 1 and 11 do not require the housing to “surround” the differential. See detailed and relevant rejections presented above.
Regarding Claims 1 and 11, Applicant’s argument that “Second, independent claim 1 additionally specifies both a "reduced diameter pinion gear cage" and "reduced axial length pinion gears." The Office Action repeats those terms alongside reference numerals 7, 8, and 9, but does not explain the dimensional comparison underlying either identification. The application gives these terms concrete technical context. For example, paragraph [0028] describes shortened pinion axial length relative to other pinion implementations in connection with reducing the cage diameter, and paragraph [0029] describes accommodation of those shorter pinions in smaller slots. The Applicant relies on the reduced dimensions recited in claim 1, without importing the particular slot construction or the numerical ratio of dependent claim 9” (p. 7-8) is not persuasive as the recitations of “reduced diameter” and “reduced axial” do not explicitly recite the dimensional comparison alleged by Applicant. Examiner believes claims 8-9 and 19-20 explicitly recite the alleged dimensions which were accounted for with the relevant rejections seen above.
Regarding Claims 1 and 11, Applicant’s argument that “Third, the Office Action identifies Muehlberger's "first axle shaft bevel gear" 14 as the claimed face gear. Muehlberger describes gears 14 and 15 as axle shaft bevel gears meshing with differential bevel gears 8 and 9. While the position of the differential bevel gears 8 and 9 at the inner ends of the side shafts establishes the stated location of those gears, it clearly does not by itself establish that they have the structure of the claimed face gear. Said differently, a bevel gear is not a face gear” (p. 8) is not persuasive as the recitation of a “face gear” does not structurally distinguish itself from the bevel gears taught by Muehlberger. There are clear differences between the shape of the face gears disclosed by Applicant and the bevel gears taught by Muehlberger; however, those differences are not currently recited in the claims.
Regarding Claim 11, Applicant’s argument that “Second, independent claim 11 recites an output shaft having the face gear at its distal end, requires the differential pinions to engage that face gear and permit relative angular displacement of that output shaft, and further recites "one or more reduction gearboxes coupled to the output shaft and configured to couple to a drive wheel of the BEV." The reference to "the output shaft" refers to" The reference to "the output shaft" refers to the same previously recited shaft. The rejection must therefore address a gearbox connection to the output shaft having the claimed face gear and differential-output function. Identifying a gearbox connected to some other output shaft in an electric drive system does not satisfy that relationship” (p. 10-11) is not persuasive. In response to Applicant's argument, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). See detailed and relevant rejections presented above.
Regarding Claim 11, Applicant’s argument that “Third, the rational stated by the Examiner on Page 25 and 26 of the Non-Final Office Action does not explain the combination as claimed beyond a conclusory statement. The Examiner incorrectly and conclusory moves from Lian's motor-output arrangement to a proposed connection with Muehlberger's differential output without explaining that change. The stated rationale is that two-stage reduction would predictably provide different speed ratios and expand marketability for different vehicle applications. That rationale identifies a general reason to consider speed reduction, but does not explain the selection of the claimed shaft connection in the proposed combined system” (p. 10) is not persuasive. Again, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). See detailed and relevant rejections presented above.
Regarding Claim 11, Applicant’s argument that “Muehlberger itself discusses an optional torque/speed transmission between rotor 2 and differential 6, including a rotor-driven bevel gear meshing with a ring gear coupled to differential housing 7. See Muehlberger, [0029]. Thus, the relevant distinction is not the mere availability of additional gearing. A statement that speed reduction is useful does not explain why the skilled person would select a gearbox connection to the face-gear output shaft of the differential in the claimed combination. This choice critically affects the power path. The rejection must explain why the cited teachings, ordinary skill, or identified design considerations would have led to the latter connection while retaining the remaining limitations of independent claim 11” is not persuasive as the teaching Applicant has pointed to is an alternative that does not discourage from the combination proposed by Examiner. As seen in Fig. 2 of Muehlberger, the differential (6) is disposed between two wheels (37.1, 37.2) and the prior art of Lian teaches reduction gearboxes (Fig. 29, 730) disposed at both wheels. Again, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). See detailed and relevant rejections presented above.
In conclusion, amended claims 1-3, 6-14 and 17-20 are rejected. See detailed and relevant rejections set forth above. Amended claims 4-5 and 15-16 are objected to as being dependent upon rejected base claim. See allowable subject matter set forth below.
Allowable Subject Matter
Claims 4-5 and 15-16 are 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.
Reasons for allowance, if applicable, will be the subject of a separate communication to the Applicant or patent owner, pursuant to 37 CFR § 1.104 and MPEP § 1302.14.
As allowable subject matter has been indicated, Applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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 James J. Taylor II whose telephone number is (571)272-4074. The examiner can normally be reached M-F, 9:00 am - 5:00 pm EST.
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JAMES J. TAYLOR II
Primary Examiner
Art Unit 3655
/JAMES J TAYLOR II/Primary Examiner, Art Unit 3655
