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 .
Drawings
The drawings were received on 2/06/2026. These drawings are acceptable.
Claim Interpretation
The claims recite several “part[s]”, including both a “first EMA part,” a “second EMA part,” a “first outer gear part,” and a “second outer gear part.” The Examiner notes that claim 1, at lines 3-10 on page 1 of the claims, recites “a first EMA part comprising: a first electric motor; a first rotary shaft […]; a first 1st stage gearbox […]; and a first brake assembly”. Therefore, it follows that the BRI (Broadest Reasonable Interpretation) of the term “part” is neither limited to a single-piece component nor a group of subcomponents that do not move relative to each other, but also includes assemblies of multiple components or subcomponents that may move relative to each other.
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 9 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.
Claim 9 recites “The EMA of claim 8 comprising bearings between the first outer gear part and the housing and between the second outer gear part and the housing.” This is double inclusion of the term “bearings.” Claim 9 depends upon claim 8 which recites “bearings between the outer gear structure and the housing.” It is unclear whether the “bearings” recited in claim 9 are the same or different from the “bearings” recited in parent claim 8. In claim 9, the bearings are required to be between the first outer gear part and the housing and between the second outer gear part and the housing. Since the “first outer gear part” is, according to parent claim 1, comprised in the “outer gear structure”, and the “second outer gear part” is likewise comprised in the “outer gear structure”, the bearings of claim 9 meet the limitations of claim 8, but it is unclear whether these are the same bearings or different additional bearings.
Appropriate correction is required.
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, 7-9, 11, and 12, as best understood, is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Skarolek (US2025/0136270, claiming priority to US provisional application 63/594,572, and therefore effectively filed on 10/31/2023).
Skarolek discloses:
Re claim 1. A rotary electromechanical actuator (EMA)[sic] comprising:
a first EMA part comprising:
a first electric motor (52);
a first rotary shaft (59) extending along an axis and arranged to be rotated about the axis by the first electric motor;
a first 1st stage gearbox (54) providing a geared transmission from the first electric motor to the first rotary shaft (59; see 35 USC 112(b) rejection hereinabove); and
a first brake assembly (50) for applying a braking force to the first rotary shaft;
the EMA further comprising:
a second EMA part comprising:
a second electric motor (62) and a second rotary shaft (69) extending along the axis and arranged to be rotated about the axis by the second electric motor; and
a second 1st stage gearbox (64) providing a geared transmission from the second electric motor to the second rotary shaft (69; see 35 USC 112(b) rejection hereinabove); and
a second brake assembly (60) for applying a braking force to the second rotary shaft;
the EMA further comprising:
an output (74; para. [0045], [0046]) arranged to rotate with rotation of the first rotary shaft (59) and the second rotary shaft (69);
a common stage gearbox (including 70 and 104, jointly forming a common stage gearbox) providing a geared transmission between the first and second shafts and the output, the common stage gearbox being located between the first and second 1st stage gearboxes (See Fig. 2);
wherein the common stage gearbox comprises:
a first sun gear (80) in engagement with and driven by the first rotary shaft (59) and a second sun gear (100) in engagement with and driven by the second rotary shaft (69);
a first intermediate gear (82) driven by the first sun gear;
a second intermediate gear (102) driven by the second sun gear; and
an outer gear structure arranged to engage with the first and the second intermediate gears; wherein the outer gear structure comprises:
a first outer gear part (including 86 including 96 and 98, 108 including 116 and 118, and 154 including 160. See explanation regarding the term “part” in the “Claim Interpretation” section hereinabove.) that extends across and engages both the first intermediate gear (82) and the second intermediate gear (102); and
a second outer gear part (130) that meshes with the first intermediate gear and is engaged with and drives the output (74) (para. [0044] and [0045]).
Re claim 2. The EMA of claim 1, where an electrical connection is provided between the first electric motor (52) and the second brake assembly (60) and between the second electric motor (62) and the first brake assembly (50) (See dashed lines in Fig. 2 indicating electrical connection and communication between first motor 52 and controller 26, and between second brake 60 and controller 26. Therefore, first motor 52 and the second brake 60 are electrically connected to each other via controller 26.).
Re claim 3. The EMA of claim 1, wherein a gear ratio of the first and the second 1st stage gearboxes is 1:100 (para. [0029] - the ratio 100 falls within the stated range of “about 1 to about 1000”. See MPEP § 2131.03.II.).
Re claim 4. The EMA of claim 1, wherein the first shaft (sun gear 80 on shaft 59) has a pitch diameter equal to that of the second shaft (sun gear 100 on shaft 69) (para. [0033] - “Generally, each of the first speed reductor 54 and the second speed reductor 64 are the same”.).
Re claim 7. The EMA of claim 1, wherein the common stage gearbox is arranged in a housing (38) and wherein the outer gear structure rotates relative to the housing to cause rotation of the output (See Fig. 2).
Re claim 8. The EMA of claim 7, further comprising bearings between the outer gear structure and the housing (See para. [0126] and [0128]).
Re claim 9. The EMA of claim 8 comprising bearings between the first outer gear part and the housing and between the second outer gear part and the housing (See para. [0126] and [0128]).
Re claim 11. The EMA of claim 1, arranged to move a control surface (22) connected to the output (para. [0045], [0046]).
Re claim 12. The EMA of claim 11, the control surface being a flight control surface of an aircraft (para. [0045], [0046], [0024]).
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.
Claim(s) 5-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Skarolek (US2025/0136270, relied upon hereinabove).
Re Claim 5
Skarolek discloses the claimed invention except for the outer gear structure (pitch diameter of first outer gear part 86 or second outer gear part 130 of the outer gear structure) having a pitch radius twice that of each of the first and the second sun gears (80, 100).
Paragraphs [0076] to [0082] discloses equations, including equations using the radii of the gears, including of sun gears (80, 100), which shows that the radii/diameters of the gears are recognized to be result effective variables.
The court held in In re Aller, 105 USPQ 233 that “[m]ore particularly, where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”
The court held in In re Boesch, 617 F.2d 272 that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”
It would have been obvious to one having ordinary skill in the art at the time the invention was made to modify Skarolek such that the outer gear structure has a pitch radius twice that of each of the first and the second sun gears, with a reasonable expectation of success, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, In re Aller, 105 USPQ 233, and since it has been held that discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art, In re Boesch, 617 F.2d 272.
Re claim 6
Rejection of Claim 6 - 1st Interpretation
Skarolek as modified further suggests:
wherein the first intermediate gear (82) has a pitch diameter equal to that of the second intermediate gear (102).
(First, the Examiner notes that the smaller gear of each of 82 and 102, as seen in Fig. 2, appear to have the same diameter.
Secondly, Skarolek discloses “[g]enerally, the first motor 52 and the second motor 62 are the same” (para. [0032] and that “[g]enerally, each of the first speed reductor 54 and the second speed reductor 64 are the same” (para. [0033]). Skarolek further discloses that the output arms (74, 76) may both be coupled directly to the flight control surface (22). Since each output arm (74, 76) is coupled to the same flight control surface (22), and since each is driven by motors (52, 62) that are the same, and by speed reducers (54, 64) that are the same, it follows that the intermediate gears (82, 102) would also be the same (including having the same pitch diameter) even though that is not explicitly stated, since the gear ratio between each motor and each output arm would need to be the same and the gear ratios of the gearboxes (54, 64) are the same.)
Rejection of Claim 6 - 2nd Interpretation
Assuming arguendo that Skarolek as modified does not suggest claim 6 because the drawings are not explicitly disclosed as being to scale, then Skarolek suggests the claimed invention except for wherein the first intermediate gear has a pitch diameter equal to that of the second intermediate gear.
Paragraphs [0076] to [0082] discloses equations, including equations using the radii of the gears, which shows that the radii/diameters of the first and second intermediate gears are recognized to be result effective variables. The court held in In re Boesch, 617 F.2d 272 that “discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.”
It would have been obvious to one having ordinary skill in the art at the time the invention was filed to set the pitch diameter of the first intermediate gear to be equal to the pitch diameter of the second intermediate gear, with a reasonable expectation of success, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Skarolek (US2025/0136270, relied upon hereinabove) in view of Winkel (US2003/0178954).
Re claim 10
Skarolek discloses all claim dependency limitations, see above, but is silent to wherein each bearing comprises a ball bearing and a bushing, the bushing being located between the respective ball bearing and the output.
Winkel teaches wherein each bearing comprises a ball bearing (including 1140, see Fig. 11) and a bushing (1130 - see Fig. 11), the bushing located between the ball bearing and the output (Fig. 11; para. [0046]), for the purpose of providing redundancy in the event of the ball bearing portion failing (para. [0046]).
It would have been obvious to a person having ordinary skill in the art at the time of filing/invention to modify the device of Skarolek such that each bearing comprises a ball bearing and a bushing, the bushing located between the ball bearing and the output, as taught by Winkel, with a reasonable expectation of success, for the purpose of providing redundancy in the event of the ball bearing portion failing.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
35 USC 112(b) rejections for all claims except claim 9 have been overcome by Applicant’s amendments. However, claim 9 remains rejected under 35 USC 112(b); the Applicant made neither amendments to claim 9 nor arguments against that ground of rejection.
The Applicant argues that Skarolek (US2025/0136270) is not prior art because the effective filing date of the instant application is 11/06/2023 (due to claiming priority to EP23306911.1 filed on 11/06/2023). However, the Examiner notes that Sharolek was effectively filed on 10/31/2023 (due to claiming priority to provisional application No. 63/594,572 filed on 10/31/2023) which predates the effective filing date of the instant application. The provisional application 63/594,572 has been reviewed by the Examiner and provides support for the subject matter of US2025/0136270 relied upon in the rejections hereinabove and in the prior office action.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
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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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/GREGORY T PRATHER/
Examiner, Art Unit 3618
/MINNAH L SEOH/ Supervisory Patent Examiner, Art Unit 3618
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