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. 1-3) in the reply filed on 11/11/2025 is acknowledged.
Drawings
The drawings are objected to because the figures contain faded text (e.g., See the “1” in “Fig. 1” of Figure 1, the “2” in “Fig. 2” of Figure 2, etc. Also note while not objected to because those numbers are in different fonts and sizes, it would be preferable for consistency if “Fig. 1”, etc. were each in the same font and font size in addition to not being faded.). Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5-6, and 8-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 12,504,060. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain many of the same structural features and structural language and it would have been obvious to a skilled artisan that they overlapped in scope and/or could be the same invention.
Claims 1-3, 5-6, and 8-12 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of U.S. Patent No. 12529414 (projected to issue on January 20, 2026; US application #18/805,556; PGPub 20250230862). Although the claims at issue are not identical, they are not patentably distinct from each other because they contain many of the same structural features and structural language and it would have been obvious to a skilled artisan that they overlapped in scope and/or could be the same invention.
The copending claims are not overly complex and lie in the same general field as applicant's claimed invention (having overlapping inventorship and common ownership therewith). Accordingly, the pertinence of the copending claims to the current claims as well as what ordinary skill/knowledge in the art would suggest should be readily apparent and flows naturally from the claims. See 37 C.F.R. 1.104(c)(2) which states “In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” See also In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) which states “There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement. […] “Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence.” Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon...”
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 5 and 10 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 5 recites the limitation "the front cover (219) of the rotor" in line 2. There is insufficient antecedent basis for this limitation in the claim. While a “rotor” and a “front cover” are both claimed in parent claim 1, there is no antecedent basis for the front cover being a component of or belonging to the rotor.
According to MPEP § 2173.03, “a claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty.
Claim 10 recites “wherein the rotor comprises a hollow rotor shaft disposed within the housing and a plurality of permanent magnets spaced apart and fixed to the outer wall of the rotor shaft”. However, paragraph [0028] states “Specifically, the rotor 5 comprises a hollow rotor shaft 51 set within the housing 1, and multiple permanent magnets 52 spaced and fixed on the outer wall of the rotor shaft 51; the multiple permanent magnets 52 are spaced from the stator 4, and the first bearing 7 and the second bearing 8 are respectively fitted on the rotor shaft 51.” (emphasis added) According to the claims, the specification, the permanent magnets are spaced and fixed on the outer wall of the rotor while being spaced from the stator, which conflicts with claim 4 which appears to state that the permanent magnets are spaced apart the outer wall. This conflict between the specification disclosure and the claimed subject matter renders the scope of the claim uncertain.
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, 8, 10, and 12 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Chung (US2018/0335113, issued as US10,859,143).
Chung discloses:
Re claim 1. A linear driving mechanism comprising:
a housing (See Fig. 2, surrounding 212);
a front cover (219) and a rear cover (See Fig. 2. Cover on left connected to housing) fixed respectively at opposite ends of the housing;
a stator (212) inside the housing;
a hollow rotor (211 including 217, 214, and 215) inside the stator for being driven to rotate by the stator;
a rolling lead screw sleeved inside the rotor;
a first bearing (see Fig. 2, bearing on left between rear cover and 214) sleeved on the rotor and fixed at one end of the rear cover;
a second bearing (213) sleeved on the rolling lead screw and fixed inside the housing; wherein
the rolling lead screw (22) comprises a central screw rod set (including 222) on an inner peripheral side of the rotor and passing through the center of the front cover, and a screw nut (215) fitted on the central screw rod and rotatably connected to the central screw rod;
the screw nut (215) is fixed inside the second bearing (213), and forms on the inner peripheral side of the rotor near the front cover end; and
the rotor (217) drives the screw nut (215) to rotate, thereby driving the central screw rod to achieve a linear telescopic movement.
Re claim 8. The linear driving mechanism as described in claim 1, wherein the first bearing (see Fig. 2, bearing on left between rear cover and 214) and the second (213) bearing are respectively located on the opposite sides of the stator (212) and spaced apart from the stator; an outer wall of the rotor (211 including 217, 214, and 215) protrudes for forming a shaft stop (shaft stop at left end of 214 as seen in Fig. 2); one end of the second bearing (213) near the front cover abuts against the front cover; and one end of the second bearing far from the front cover abuts against the shaft stop (See Fig. 2).
Re claim 10. The linear driving mechanism as described in claim 1, wherein the rotor (211 including 217, 214, and 215) comprises a hollow rotor shaft (214) disposed within the housing and a plurality of permanent magnets (217) spaced apart and fixed to the outer wall of the rotor shaft; the multiple permanent magnets are spaced apart from the stator; the first bearing and the second bearing are respectively sleeved on the rotor shaft; and the lead screw nut (215) is formed on the inner peripheral side of the rotor shaft near the front cover (See Fig. 2).
Re claim 12. The linear driving mechanism as described in claim 1, further comprising a position sensor (210; para. [0034]), wherein the position sensor comprises a collecting part fixed to the rear cover and a rotating part fixed to one end of the rotor near the rear cover (See Fig. 2), with the collecting part being opposite and spaced from the rotating part (See Fig.2 and para. [0034]. An “encoder” works by having one portion connected to the shaft and one portion not connected to the shaft (e.g. an encoder poriton and sensor portion). Since the position sensor 210 is disposed within the rear cover, it necessarily is fixed directly or indirectly to the rear cover.).
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(s) 2, 3, 5, 6, and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chung (US2018/0335113, issued as US10,859,143) in view of Knoell (US2024/0117865, issued as US12,181,027).
Re Claim 2
Chung as modified above does not disclose wherein the rolling lead screw is a planetary rolling screw; the screw nut includes an internal thread structure on one side close to the central screw rod; the central screw rod includes a screw body set on the inner peripheral side of the rotor and an extension portion extending from one end of the screw body near the front cover; an outer peripheral side of the screw body includes an external thread structure; the screw nut is meshed with the external thread structure of the screw body through the internal thread structure for performing a rotational connection.
Knoell teaches wherein the rolling lead screw is a planetary rolling screw; the screw nut (includes 3) includes an internal thread structure (see threads inside 3) on one side close to the central screw rod; the central screw rod (4) includes a screw body (4) set on the inner peripheral side of the rotor (EM.h; para. [0012] - “The housing of the linear actuator is preferably also designed as the housing of the electric motor, and thus comprises coils or permanent magnets on its inner circumference.”) and an extension portion extending from one end of the screw body near the front cover; an outer peripheral side of the screw body (4) includes an external thread structure (see Fig. 3); the screw nut is meshed (See Fig. 3; indirectly through planetary rollers) with the external thread structure of the screw body through the internal thread structure for performing a rotational connection (See Fig. 3), for the purpose of making the device more compact axially (Para. [0012]).
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 Chung such that wherein the rolling lead screw is a planetary rolling screw; the screw nut includes an internal thread structure on one side close to the central screw rod; the central screw rod includes a screw body set on the inner peripheral side of the rotor and an extension portion extending from one end of the screw body near the front cover; an outer peripheral side of the screw body includes an external thread structure; the screw nut is meshed with the external thread structure of the screw body through the internal thread structure for performing a rotational connection, as taught by Knoell, with a reasonable expectation of success, for the purpose of making the device more compact axially.
Chung as modified above further suggests:
Re claim 3. The linear driving mechanism as described in claim 2, wherein the rolling lead screw further includes a first gear ring (See annotated Fig. 3 from Knoell below), a second gear ring (See annotated Fig. 3 from Knoell below) fixed at the two ends of the screw nut, and a plurality of annular lead screw columns (See annotated Fig. 3 from Knoell below) spaced around the central lead screw, each annular lead screw column having lead screw external thread structures on an outer peripheral side thereof; each end of each annular lead screw column is respectively set in the first gear ring and the second gear ring to form a rotational connection; the lead screw external thread structures of each annular lead screw column respectively mesh with the external thread structures of the lead screw body, and the lead screw external thread structures of each annular lead screw column also respectively mesh with the internal thread structures of the screw nut (See Fig. 3).
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Re claims 5 and 6
including a protrusion (portion of 219 contacting bearing 213 in Chung) formed along the inner side near one end of the front cover (219) of the rotor, and extending radially outward for forming a projection; the screw nut locates on the inner peripheral side of the projection near the central screw rod (See Fig. 2 in Chung).
Re claim 9
Chung as modified above further shows a length of the screw nut is 1/8-3/4 of a length of the rotor (See Fig. 2 in Chung).
Alternatively, since while Chung appears to show the length of the screw nut falling within the claimed range, but does not explicitly state that the drawings are to scale, assuming arguendo that Chung as modified discloses the claimed invention but does not explicitly disclose a length of the screw nut is 1/8-3/4 of a length of the rotor; it would have been obvious to one having ordinary skill in the art at the time the invention was made to adjust the length of the screw nut relative to the length of the rotor to be within the claimed range, 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. In re Aller, 105 USPQ 233. Chung discloses in paragraph [0007] that the lengths in the linear driving mechanism are result effective variables.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chung (US2018/0335113, issued as US10,859,143) in view of Knoell (US2024/0117865, issued as US12,181,027), and further in view of Morimoto (US2023/0387775).
Re claim 11
Chung as modified above is silent to wherein a motor formed by the stator and the rotor together is an 8-pole-9-slot structure, or a 10-pole-12-slot structure, or a 14-pole-12-slot structure, or a 14-pole-15-slot structure, or a 16-pole-15-slot structure, or a 16-pole-18-slot structure.
Morimoto teaches wherein a motor formed by the stator and the rotor together is an 8-pole-9-slot structure (para. [0077] - 8 pole, [0070] - 9 slots), or a 10-pole-12-slot structure, or a 14-pole-12-slot structure, or a 14-pole-15-slot structure, or a 16-pole-15-slot structure, or a 16-pole-18-slot structure, for the purpose of improving torque and efficiency (para. [0100]).
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 Chung such that wherein a motor formed by the stator and the rotor together is an 8-pole-9-slot structure, or a 10-pole-12-slot structure, or a 14-pole-12-slot structure, or a 14-pole-15-slot structure, or a 16-pole-15-slot structure, or a 16-pole-18-slot structure, as taught by Morimoto, with a reasonable expectation of success, for the purpose of improving torque and efficiency.
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.
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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.
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/GREGORY T PRATHER/
Examiner, Art Unit 3618
/MINNAH L SEOH/ Supervisory Patent Examiner, Art Unit 3618