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 papers required by 37 CFR 1.55.
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 4 is 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.
Re: claim 4. The phrase “the connection openings” lacks proper antecedent basis in the claim.
Claim Rejections - 35 USC § 103
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 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) 1-4 and 8-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE-102017011055 (DE’055) in view of US Patent 8439455 to Hayashi et al.
Re: claims 1, 4, and 8. DE’055 shows in figure 1 a brake actuating device for a motor vehicle brake system comprising: a hydraulic unit 18 for conveying a hydraulic fluid, wherein the hydraulic unit comprises a number of outlet openings 24 in a side face 71 thereof; an electric motor 26 arranged on the side face as shown, wherein the electric motor 26 drives a pressure generator, as described in the paragraph beginning “The hydraulic block is preferably part of”, located in the hydraulic unit 18; but is silent with regard to an adapter unit which comprises a number of inlet openings being arranged on the side face, wherein the outlet openings of the hydraulic unit are connected in fluid communication via a respective connecting tube with the corresponding inlet openings of the adapter unit.
Hayashi et al. teach in figures 7 and 8 the use of a brake actuating device including an adapter unit 101 which comprises a number of inlet openings shown in the area of elements 115 is arranged on a side face i.e. the side of 100b that all of the other components are on element 100b as shown in figures 7 and 8, wherein outlet openings at the opposite ends of 113a-c from the inlet openings shown in the area of elements 115 of a hydraulic unit are connected in fluid communication via a respective connecting tube 113a-c with the corresponding inlet openings of the adapter unit.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the brake actuating device of DE’055 to have included an adapter unit which comprises a number of inlet openings being arranged on the side face, wherein the outlet openings of the hydraulic unit are connected in fluid communication via a respective connecting tube with the corresponding inlet openings of the adapter unit, in view of the teachings of Hayashi et al., in order to provide a means of directing fluid flow in a simplified installation by eliminating the need to route the tubes around the actuator device which also reduces packaging space. With regard to claim 4, see col. 8 lines 53-67 of Hayashi et al. with regard to the connection of the inlet openings to the connection openings in order to promote fluid flow through the system to the brake devices. With regard to claim 8, Examiner notes that the connecting tubes of DE’055, as modified, would be guided at least partly around a housing of the electric motor since, as modified, the inlet and outlet openings which are connected by the connecting tubes are located on the same side face as the electric motor.
Re: claims 2 and 3. DE’055, as modified, teach in figure 8 of Hayashi et al. the limitation wherein the adapter unit 101 comprises a connection surface shown at the end of the lead line of number 101 having a number of connection openings 101c, 101f for fluidly connecting wheel brakes of the motor vehicle brake system in order to provide a means of further help reduce packaging space by keeping tubes arranged on one side face instead of around the actuator device. With regard to claim 3, the angle between the adapter unit 101 and the side face on which the base of element 101 sits of Hayashi et al. is approximately 90 degrees as shown in figures 7 and 8 of Hayashi et al. to accommodate multiple connecting tubes without significant obstruction.
Re: claim 9. DE’055, as modified, teach in figures 7 and 8 of Hayashi et al. the placement of the adapter unit on the side face of 100b with respect to other components, but the combination is silent with regard to the adapter unit specifically being arranged above the electric motor.
Examiner notes that there are a finite number of identified, predictable axial placements of the adapter unit with respect to the electric motor yielding a reasonable expectation of success – 1. Above the electric motor, 2. Below the electric motor, or 3. At the same axial level as the electric motor.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have tried to arrange the adapter unit above the electric motor so that the inlets openings would be placed above the outlet openings to facilitate brake fluid flow with the help of gravity. See MPEP 2143(I) and KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007).
Re: claim 10. DE’055, as modified, teach in the paragraph directly above Background/Summary of Hayashi et al. wherein the adapter unit 101 is detachably connected to a hydraulic unit 100.
Hayashi et al. further teach the use of two components - 100a and 100b being detachably connected via a screwed connection. See col. 8 lines 19-21 of Hayashi et al.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the detachable connection of the adapter unit to the hydraulic unit of DE’055, as modified, to have been via screwed connection, in view of the teachings of Hayashi et al., in order to use widely commercially available and economical fasteners in order to facilitate assembly and keep assembly costs low.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE-102017011055 (DE’055) in view of US Patent 8439455 to Hayashi et al. as applied above, and further in view of CN-126139975 (CN’975).
DE’055, as modified, is silent with regard to the openings being drilled.
CN’975 teaches in the background of the patent reference the use of openings on a hydraulic block being drilled.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the openings on the block of DE’055, as modified, to have been drilled, in view of the teachings of CN’975, in order to provide a means of forming holes that is relatively precise and smooth to efficiently achieve unobstructed fluid flow.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE-102017011055 (DE’055) in view of US Patent 8439455 to Hayashi et al. as applied above, and further in view of CN-218543484 (CN’484).
DE’055, as modified, is silent with regard to the material of the connecting tubes of the brake actuating device.
CN’484 teaches in the English abstract the use of brake pipes or connecting tubes being made of copper.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the connecting tubes of DE’055, as modified, to have been made of copper, in view of the teachings of CN’484, in order to provide a material for the connecting tubes that has good corrosion resistance which can improve the overall life of the system.
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE-102017011055 (DE’055) in view of US Patent 8439455 to Hayashi et al. as applied above, and further in view of CN-202686352 (CN’352).
DE’055, as modified, teach in Hayashi et al. figures 7 and 8 the connecting tubes having a curved design as shown going from the inlet openings to the outlet openings, but is silent with regard to the connecting tubes specifically being rigid.
CN’352 teaches near the end of claim 1 the use of a brake tube being ridig.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the connecting tubes of DE’055, as modified, to have been rigid, in view of the teachings of CN’352, in order to provide a material that has sufficient structural integrity to remain durable under harsh conditions in order improve the overall life of the brake system.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/493829 (US 2024/0140383) (reference application) in view of US Patent 8439455 to Hayashi et al. Although the claims at issue are not identical, they are not patentably distinct from each other because both the instant invention and application ‘829 recite a brake actuating device comprising a hydraulic unit including first openings on a side face, an electric motor on the side face, an adapter unit including second openings, but application ‘829 is silent with regard to the first and second openings being connected via connecting tubes.
Hayashi et al. teach in figure 7 the use of connecting tubes 113a-c.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the connection between the first and second openings of application ‘829 to have been via connecting tubes, in view of the teachings of Hayashi et al., in order to provide a structurally sound reinforced path for guiding the fluid flow from the first openings to the second openings to ultimately direct brake fluid to the brakes to decelerate the vehicle.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. DE-102018221450 and DE-102018214565 teach the use of similar brake actuating devices.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELODY M BURCH whose telephone number is (571)272-7114. The examiner can normally be reached Monday - Friday 6:30AM-3PM, generally.
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August 1, 2026
/MELODY M BURCH/Primary Examiner, Art Unit 3616
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