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 .
Priority
Receipt is acknowledged of certified copies of GB 2314128.6 as required by 37 CFR 1.55.
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in the European Patent Office on Sept. 1, 2023. It is noted, however, that applicant has not filed a certified copy of the EP 23461644.9 application as required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on Nov. 11, 2024 has been considered by the Examiner.
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.
Claims 1-5, 8-12, 14, 17, 19-22 and 25 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uchihara et a. (US 2010/0108430).
Uchihara discloses and shows at Fig. 1 a steering column assembly for a vehicle, comprising:
an elongate steering column (1/2) rotatably mounted about a longitudinal axis and configured for attachment of a steering wheel (not shown) at one end (at 4a);
a first gear (26) configured to rotate with the elongate steering column;
a motor (not shown, para. 0046) having an output (27) engaged with the first gear; and
first and second bearings (21, 20, respectively) configured for rotational mounting of the elongate steering column and located to one side of the first gear along the longitudinal axis,
wherein the first and second bearings are spaced from one another along the longitudinal axis.
Cl. 2 – the first gear is located between the ends of the elongate steering column, and the first and second bearings are located between the first gear and an end of the elongate steering column opposite the end configured for attachment of a steering wheel.
Cl. 3 – each of the first and second bearings comprise annular bearings, and wherein the diameter of the first bearing is greater than the diameter of the second bearing.
Cl. 4 – the first bearing (21) is located between the first gear and the second bearing.
Cl. 5 – the elongate steering column comprises an annular shoulder, and the first gear is located between the annular shoulder and the first bearing.
Cl. 8 – the assembly further comprises an annular retaining ring located between the second bearing and the end of the elongate steering column opposite the end configured for attachment of a steering wheel.
Cl. 9 – the annular retaining ring abuts the second bearing.
Cl. 10 – the assembly further comprises a housing (22) and wherein the first gear, first bearing and second bearing are enclosed within the housing.
Cl. 11 – the first and second bearings are configured to provide support to the first gear within the housing along the longitudinal axis.
Cl. 12 – the first bearing and the second bearing are each positioned between the elongate steering column and the housing.
Cl. 14 – the output from the motor comprises a worm gear (27) engaged with the first gear.
Cl. 17 – the first gear is a press-fit on the elongate steering column (para. 0046).
Cl. 19 – the elongate steering column comprises a plurality of sections, wherein the first gear, first bearing and second bearing are located on a first section.
Cl. 20 – the elongate steering column assembly comprises a second section (1) connectable with the first section, wherein the second section is configured for attachment of a steering wheel at a free end.
Cl. 21 – the elongate steering column comprises a plurality of sections, wherein the first gear, first bearing and second bearing are located on a first section, the first section comprising the annular retaining ring.
Cl. 22 – the elongate steering column comprises a plurality of sections, wherein the first gear, first bearing and second bearing are located on a first section, the first section of the elongate steering column being located within the housing.
Cl. 25 – Uchihara discloses a vehicle comprising a steering column assembly according to claim 1.
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.
Claims 6, 7, 13, 15, 16, 18 23 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Uchihara as applied to claim 1 and its dependent claims.
Uchihara discloses and shows the invention of claim 1 and its dependents as described elsewhere above.
Regarding claim 6, the first bearing does not abut a portion of the first gear. However, such would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in view of the following:
· MPEP 2144 clearly states that “The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rational may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law" (emphasis added).
· MPEP 2144 also states, “If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection” (emphasis added). However, Applicant’s disclosure, and all other evidence of record, fails to set forth any unexpected result (i.e., criticality) from the first bearing abutting the first gear. Accordingly, the claimed arrangement lacks any criticality such that a rejection based solely on case law is appropriate.
Cl. 7 – the elongate steering column comprises a further annular shoulder, and the second bearing abuts the further annular shoulder (see Fig. 1).
Cl. 13 – Uchihara discloses the worm gear is press-fitted onto its respective shaft and a bush being press-fitted into the inner periphery of a housing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to also press-fit the first bearing onto the steering column and the second bearing withing the housing to ensure proper fit and operation of the gear and bearing.
Cls. 15 and 16 – Uchihara discloses and shows 1 motor. Having two motors arranged diametrically opposed would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in view of MPEP 2144.04(VI)(B-C) which states:
“the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced” in citing In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) and “the particular placement of a contact in a conductivity measuring device was held to be an obvious matter of design choice” in citing In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975).
Cl. 18 – The first gear is press-fit onto the elongate steering column and not over moulded onto the steering column. The choice in how to place the first gear onto the steering column would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention in view of the following:
· MPEP 2144 clearly states that “The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rational may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law" (emphasis added).
· MPEP 2144 also states, “If the applicant has demonstrated the criticality of a specific limitation, it would not be appropriate to rely solely on case law as the rationale to support an obviousness rejection” (emphasis added). However, Applicant’s disclosure, and all other evidence of record, fails to set forth any unexpected result (i.e., criticality) in how the first gear is mounted on the steering column. Accordingly, the claimed mounting lacks any criticality such that a rejection based solely on case law is appropriate.
Cls. 23 and 24 – The steering column assembly of claim 1, as described by Uchihara, does not specify a steer-by-wire system or vehicle. However, it has been held that a recitation with respect to the manner in a claimed apparatus is intended to be employed does not differentiate the clamed apparatus from a prior art apparatus satisfying the claimed structural limitation. See MPEP 2114(II), Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BOBBY RUSHING, JR whose telephone number is (571)270-0501. The examiner can normally be reached Monday - Friday, 8AM-5PM EST.
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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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/BOBBY RUSHING, JR/ Primary Examiner, Art Unit 3618
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