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 .
Summary
This communication is a First Office Action Non-Final Rejection on the merits.
Claim(s) 1-22 is/are currently pending and considered below.
Election/Restrictions
Applicant’s election without traverse of claims 1-17 in the reply filed on 12 November 2025 is acknowledged.
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.
(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) 1-3 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schupbach (EP 2 594 367 A1; see machine translation mailed herewith).
Regarding claim 1, Schupbach discloses a torque limiter (Figs. 1-3; “The present invention relates to a screwing with a device for limiting the transmitted torque”, page 2 under TECHNICAL AREA) comprising:
a drive shaft (90 and 70 together can be considered a drive shaft with 96 being the shaft portion) having first teeth (62);
a one-piece clutch (60) having a top surface defining second teeth (63) and a bottom surface defining third teeth (64), the second and the third teeth being integral to a flexible region of the one-piece clutch (every material has a degree of flexibility, including the center portion of 60, to which 63 and 64 are integral), wherein the one-piece clutch defines a single structural unit (60 is a single structural unit); and
a torque shaft (21, 72, and 80) having fourth teeth (83),
wherein the first teeth engage the second teeth and the third teeth engage the fourth teeth (see Fig. 1).
Regarding claim 2, Schupbach discloses the torque limiter of claim 1, further comprising a housing (10) disposed around portions of the drive shaft, the torque shaft, and the one-piece clutch (Fig. 1).
Regarding claim 3, Schupbach discloses the torque limiter of claim 2, wherein the housing encases the first, the second, the third, and the fourth teeth (Fig. 1).
Regarding claim 10, Schupbach discloses the torque limiter of claim 1, wherein the one-piece clutch is configured to transfer an applied torque from the drive shaft to the torque shaft up to a maximum torque (“The present invention relates to a screwing with a device for limiting the transmitted torque”, p. 2 under TECHNICAL AREA; limited transmitted torque is considered the maximum torque).
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Schupbach in view of Bortoli (US 2020/0332841 A1).
Regarding claim 13, Schupbach discloses the torque limiter of claim 1.
Schupbach does not explicitly disclose that the one-piece clutch is additively manufactured.
However, Bortoli discloses teaches that the one-piece clutch is additively manufactured (“[0025] Certain embodiments of a clutch basket, e.g., 100, 200, can be made by additive manufacturing or casting, for example. Any other suitable manufacturing process is contemplated herein.”).
Therefore, it would have been obvious to one with ordinary skill in the art before the effective filling date of the claimed invention to have modified the one-piece clutch, as disclosed by Schupbach, to be additively manufactured, as taught by Bortoli, since additive manufacturing is one of many methods to one having ordinary skill in the art to create clutches to be used (see also Saavedra to US 2022/0409402 A1 para 68, and Iwasaki to US 2022/0154782 para 15 and 49).
Allowable Subject Matter
Claim(s) 4-9, 11-12, and 14-17 is/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.
The following is a statement of reasons for the indication of allowable subject matter:
The claims in this application have been allowed because the prior art of record fails to disclose or make obvious the claimed invention including the following features:
Claim 4, “wherein the housing includes an anti-torque key.”
Claim 11, “wherein the one-piece clutch is configured to compress or flex under an amount of torque that exceeds the maximum torque.”
Claim 14, “wherein the one-piece clutch further includes a plurality of pillars integrally formed between a plurality of layers that extend perpendicular to a longitudinal axis of the torque limiter.”.
The closest prior art of record, Schupbach, fails to disclose the above limitations. Other prior art of record (see PTO-892 mailed herewith), fails to remedy Schupbach’s deficiency without impermissible hind sight reconstruction of the applicant's invention.
The combination of the claimed limitations are novel and found to be allowable over the prior art. The cited references taken singly or in combination do not anticipate or make obvious the Applicant's claimed invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure (See PTO-892 Notice of References Cited).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Himchan Song whose telephone number is (571)272-4142. The examiner can normally be reached M-Th 9:00 a.m. - 4:30 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna Kinsaul can be reached at (571) 270-1926. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HIMCHAN SONG/Examiner, Art Unit 3731