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 .
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102a1 as being anticipated by Brill (US Pat. No. 7,350,606).
Regarding claim 1, Brill discloses An axle assembly comprising: an electric motor that has a rotor that is rotatable about a first axis (28); a wheel end assembly that is rotatable about a second axis (14) that is disposed above the first axis (fig 2), wherein the wheel end assembly includes a wheel hub (generally at 42) that is adapted to facilitate mounting of a wheel (generally at 40); and a reduction gear module (generally at 20) having a plurality of gears that transmits torque between the electric motor and the wheel end assembly (at least Abstract).
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 1-2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3 of U.S. Patent No. 11,618,281. Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claims 1-2 of the instant application are disclosed or implied in at least claims 1 and 3 of the U.S. patent noted above. The limitations of the instant application are no more than a broadening or rearrangement of the limitations of the above noted U.S. Patent claims. There are no substantive differences between the instant application claims under rejection as compared to the referenced patent claims noted. The reasons why a person of ordinary skill in the art would conclude that the invention defined in the claims noted above at issue is anticipated by, or would have been an obvious variation of the invention defined in the claims of the patent noted above are as follows: it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have designed an axle assembly according to claims 1-2 of the instant application, since the instant application claims similar limitations which can be found in claims 1 and 3 of the prior patent, and since Applicant has not disclosed that the alleged invention of the above noted claims of the instant application provide any additional novelty over the claims of the above noted patent and since it would have been within the level of ordinary skill in the art to provide an axle assembly according to claims 1-2 of the instant application in view of the prior patent claims. Therefore, there are no limitations in the instant application claims that result in the claims being at least non-obvious over the patented case. Claims 1 and 3 of the prior patent comprises the limitations of claims 1-2 of the instant application.
Allowable Subject Matter
Claims 3-15 are allowed.
The following is an examiner’s statement of reasons for allowance: the prior art when taken alone or in combination does not appear to teach or fairly suggest at this time the combination of limitations of claims 3 or 11. In particular, the prior art discloses axle assemblies comprising electric motors and gear reduction units attached thereto inside the wheel hub (see at least Brill noted above). However, the prior art does not teach the combination of limitations of an axle assembly comprising: an electric motor that has a rotor and a rotor shaft that are rotatable about a first axis; a wheel end assembly that is rotatable about a second axis that is disposed above the first axis, wherein the wheel end assembly has a wheel hub that is adapted to facilitate mounting of a wheel; a reduction gear module that includes: a first gear that is rotatable about the first axis with the rotor; a second gear that meshes with the first gear and is rotatable about a third axis; a third gear that meshes with the second gear and is rotatable about the second axis; and a fourth gear that is rotatable about the third axis; and a fifth gear that meshes with the fourth gear and is rotatable about the second axis; and a clutch that selectively couples the third gear or the fifth gear to a wheel end shaft that is rotatable about the second axis and connected to the wheel end assembly [claim 3]; or an axle assembly comprising: an electric motor that has a rotor and a rotor shaft that are rotatable about a first axis; a wheel end assembly that is rotatable about a second axis that is disposed above the first axis, wherein the wheel end assembly has a wheel hub that is adapted to facilitate mounting of a wheel; a reduction gear module that includes: a first gear that is rotatable about the first axis with the rotor; a second gear that meshes with the first gear, is rotatable about a third axis, and is selectively couplable to a first connection shaft; a third gear that meshes with the first gear, is rotatable about a fourth axis, and is selectively couplable to a second connection shaft; and a fourth gear that is rotatable about the third axis and is selectively couplable to the first connection shaft; and a fifth gear that is rotatable about the fourth axis and is selectively couplable to the second connection shaft; and a sixth gear that meshes with the fourth gear and the fifth gear, is rotatable about the second axis, and is connected to the wheel end assembly; a clutch that selectively couples the second gear or the fourth gear to the first connection shaft; and a second clutch that selectively couples the third gear or the fifth gear to the second connection shaft [claim 11].
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB B MEYER whose telephone number is (571)270-3535. The examiner can normally be reached Monday - Friday 9-7.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, J Allen Shriver can be reached at 303.297.4337. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JACOB B. MEYER
Primary Examiner
Art Unit 3613
/JACOB B MEYER/Primary Examiner, Art Unit 3613
