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/Restriction
The Examiner notes that a previous election of species requirement was made by the Office on 11/17/2025. The Applicant elected Species 1 in their reply filed 1/19/2026. The Applicant requested that Species 1 be grouped as Figure 2 and Figure 4 rather than Figure 2 and Figure 3 as indicated in the previous election requirement, and that the Examiner contact the Applicant for an interview if the Examiner disagreed with that grouping. Upon further review, the Examiner agreed that Figure 2 and 3 are drawn to different species, but also determined that each of Figures 2, 3, and 4 are drawn to different species. The Examiner called the Applicant on 2/13/2026 to discuss; an updated election of species requirement by the Examiner and an updated election by Applicant are hereinbelow.
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
This application contains claims directed to more than one species of the generic invention. These species are deemed to lack unity of invention because they are not so linked as to form a single general inventive concept under PCT Rule 13.1.
The species are as follows:
Species 1. Shown in Fig. 2; identified on page 5 of the specification
Species 2. Shown in Fig. 3; identified on page 6 of the specification
Species 3. Shown in Fig. 4; identified on page 6 of the specification
Species 4. Shown in Fig. 5; identified on page 6 of the specification
Species 5. Shown in Fig. 6; identified on page 6 of the specification
Applicant is required, in reply to this action, to elect a single species to which the claims shall be restricted if no generic claim is finally held to be allowable. The reply must also identify the claims readable on the elected species, including any claims subsequently added. An argument that a claim is allowable or that all claims are generic is considered non-responsive unless accompanied by an election.
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which are written in dependent form or otherwise require all the limitations of an allowed generic claim. Currently, at least claim 1 appears generic.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
The species share the technical feature of a ball screw drive having a threaded spindle and a spindle nut rotatable relative to the threaded spindle, and a damping element connected to one of the spindle and the nut. This shared technical feature is not a special technical feature because Namgung (US2006/0060014) discloses a ball screw drive having a threaded spindle (12) and a spindle nut (13) rotatable relative to the threaded spindle, and a damping element (damper 20) connected to one of the spindle and the nut.
During a telephone conversation with Matthew Evans on 2/13/2026 a provisional election was made without traverse to prosecute the invention of Species 1 (Shown in Fig. 2), claims 1-4, 8-11, 14, and 16-19. Affirmation of this election must be made by applicant in replying to this Office action. Claims 5-7, 12-13, 15, and 20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
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.
Claim(s) 1-4, 8-11, 14, and 16-19 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.
Claims 1 recites “the damping element configured to be moved without play relative to the remaining one of the threaded spindle or the spindle nut”. Claim 16 recites “an elastic vibration damping element: i) rigidly connected to the one of the threaded spindle or the spindle nut, and ii) configured to be moved without play relative to the remaining one of the threaded spindle or the spindle nut.” The limitation “moved without play” is a contradiction. The term “play” requires movement, so the phrase “without play” means without movement, which contradicts with the requirement for movement.
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) 1-4, 8-11, 14, and 16-19 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Kuster (US2018/0328472).
Kuster discloses:
Re claim 1. A ball screw drive (1) comprising:
a threaded spindle (12), and
a spindle nut (14) configured to be rotated relative to the threaded spindle (12), and one of the threaded spindle or the spindle nut is a rotatable drive element and a remaining one of the threaded spindle or the spindle nut is an output element configured to move without rotation, and
a damping element (18, para. [0009]) rigidly connected to the one of the threaded spindle or the spindle nut, the damping element configured to be moved without play (para. [0009]. There is movement rotationally but not axially since the bearing ring remains on the threaded spindle.) relative to the remaining one of the threaded spindle or the spindle nut (14).
Re claim 2. The ball screw drive according to claim 1, wherein the threaded spindle (12) is the rotatable drive element and the spindle nut (14) is the output element, and the spindle nut is configured to be axially movable (para. [0029])
Re claim 3. The ball screw drive according to claim 2, wherein the damping element (18) is mounted to the threaded spindle (12; para. [0009]) and engages a piston support (15; para. [0005], [[029) rigidly coupled to the spindle nut (14).
Re claim 4. The ball screw drive according to claim 1, wherein the spindle nut (14) is the rotatable drive element and the threaded spindle (12) is the output element, and the threaded spindle is configured to be axially movable (para. [0029]).
Re claim 8. The ball screw drive according to claim 1, wherein the damping element (18) is configured as an annular element arranged concentrically to a central axis of the threaded spindle (12).
Re claim 9. An electromechanical actuator of a hydraulic brake (para. [0005]) system, comprising the ball screw drive according to claim 1.
Re claim 10. The electromechanical actuator of claim 9, further comprising a piston (para. [0005]) fixed to the one of spindle nut (14)or the threaded spindle and the piston is configured to receive a hydraulic fluid pressure (para. [0005]).
Re claim 11. The ball screw drive according to claim 1, wherein the damping element (18) is an elastic element (para. [0009], [0019], [0030] - “spring/damping element”).
Re claim 14. The ball screw drive according to claim 3, wherein the damping element (18) is arranged radially between the threaded spindle (12) and the piston support (15) and the damping element (18) slidably engages the piston support (para. [0009]).
Re claim 16. A ball screw drive (1) comprising:
a threaded spindle (12), and
a spindle nut (14) configured to be rotated relative to the threaded spindle, and one of the threaded spindle or the spindle nut is a rotatable drive element and a remaining one of the threaded spindle or the spindle nut is an output element configured to move without rotation,
a piston (para. [0009]) fixed to one of the threaded spindle or the spindle nut (14), the piston configured to receive a hydraulic fluid pressure (para. [0009]), and
an elastic vibration damping element (18): i) rigidly connected to the one of the threaded spindle (12) or the spindle nut, and ii) configured to be moved without play (para. [0009]. There is movement rotationally but not axially since the bearing ring remains on the threaded spindle.) relative to the remaining one of the threaded spindle or the spindle nut (14).
Re claim 17. The ball screw drive of claim 16, further comprising a plurality of balls (26; See Fig. 1) disposed between the threaded spindle and the spindle nut.
Re claim 18. The ball screw drive of claim 16, wherein the elastic vibration damping element (18) is annularly shaped.
Re claim 19. The ball screw drive of claim 16, wherein the piston (para. [0009]) and spindle nut (14) move together in an axial direction (para. [0009] - move together via 15).
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.
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/GREGORY T PRATHER/
Examiner, Art Unit 3618
/MINNAH L SEOH/ Supervisory Patent Examiner, Art Unit 3618