DETAILED CORRESPONDENCE
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 .
Status of Claims
This Final Office Action is in response to the amendment filed on December 23rd, 2025 for application no. 18/934,407 filed on November 1st, 2024. Claims 1-26 are pending. In the present amendment, claims 1-26 are amended.
Examiner Note
Examiner would welcome an interview to clarify any of the various objections/rejections seen below in order to expediate prosecution of the instant application.
Claim Objections
Regarding Claim 2 (line 2), please change the recitation of “coaxially about a rotary axis thereof” to - - coaxially about [[a]] the rotary axis thereof - - to correct minor informalities regarding antecedent basis.
Regarding Claim 2 (line 4), please change the recitation of “define a common envelope of the rotary element” to - - define the envelope of the rotary element - - to correct minor informalities regarding antecedent basis.
Regarding Claim 2 (lines 4-5), please change the recitation of “each helical peripheral surface having a profile in a radial plane which is inclined to a tangent to said envelope” to - - each helical peripheral surface having a respective profile in a respective radial plane which is inclined to a respective tangent to said envelope - - to correct minor informalities regarding antecedent basis.
Regarding Claim 2 (lines 5-6), please change the recitation of “and the inclinations of the first and second helical peripheral surfaces to the tangent being of opposite sense” to - - and [[the]] inclinations of the first and second helical peripheral surfaces to the respective tangents being of opposite sense - - to correct minor informalities regarding antecedent basis.
Regarding Claim 2 (line 7), please change the recitation of “whereby in use with another such rotary element in a rotary transmission” to - - whereby in use with the another such rotary element in [[a]] the rotary transmission - - to correct minor informalities regarding antecedent basis.
Regarding Claim 2 (lines 7-9), please change the recitation of “the helical peripheral surfaces of the rotary element engage with helical peripheral surfaces of complementary inclination of the other rotary element” to - - the helical peripheral surfaces of the rotary element engage with the helical peripheral surfaces of complementary inclination of the other rotary element - - to correct minor informalities regarding antecedent basis.
Regarding Claim 2 (lines 9-10), please change the recitation of “between the first and second rotary elements at regions of rolling contact” to - - between the the regions of rolling contact - - to correct minor informalities regarding antecedent basis.
Regarding Claim 5 (lines 1-2), please change the recitation of “having a plurality of said helical radial projections” to - - wherein each rotary element has
Regarding Claim 9 (lines 8-9), please change the recitation of “said second helical radial projection of said second rotary element” to - - said [[second]] first helical radial projection of said second rotary element - - to correct minor informalities regarding antecedent basis.
Regarding Claim 9 (lines 10-11), please change the recitation of “second helical radial projection of said first radial element engages with said helical peripheral surface of said first helical radial projection of said second radial element” to - - second helical radial projection of said first rotary element engages with said helical peripheral surface of said [[first]] second helical radial projection of said second rotary element - - to correct minor informalities regarding antecedent basis.
Regarding Claim 9 (lines 15-16), please change the recitation of “the first and second rotary elements at regions of rolling contact” to - - the first and second rotary elements at the regions of rolling contact - - to correct minor informalities regarding antecedent basis.
Regarding Claim 10 (lines 1-2), please change the recitation of “wherein said helical peripheral surface” to - - wherein said helical peripheral surfaces - - to correct minor informalities regarding antecedent basis.
Regarding Claim 11 (line 1), please change the recitation of “The rotary element according to claim 10” to - - The rotary [[element]] drive arrangement according to claim 10 - - to correct minor informalities regarding antecedent basis.
Regarding Claim 18 (lines 2-3), please change the recitation of “about a rotary axis” to - - about [[a]] the rotary axis - - to correct minor informalities regarding antecedent basis.
Regarding Claim 18 (lines 4-5), please change the recitation of “each helical surface having a profile in a radial plane which is inclined to a tangent” to - - each helical surface having a respective profile in a respective radial plane which is inclined to a respective tangent - - to correct minor informalities regarding antecedent basis.
Regarding Claim 18 (line 11), please change the recitation of “and have helical peripheral surfaces” to - - and have respective helical peripheral surfaces - - to correct minor informalities regarding antecedent basis.
Regarding Claim 18 (line 13), please change the recitation of “said helical surface of said second internal helical track” to - - said helical surface of said [[second]] first internal helical track - - to correct minor informalities regarding antecedent basis.
Regarding Claim 18 (lines 15-16), please change the recitation of “whereby in use with an internal rotary element in a rotary transmission” to - - whereby in use with [[an]] the internal rotary element in [[a]] the rotary transmission - - to correct minor informalities regarding antecedent basis.
Regarding Claim 18 (line 17), please change the recitation of “said helical peripheral surface of said second helical radial projection” to - - said helical peripheral surface of said [[second]] first helical radial projection - - to correct minor informalities regarding antecedent basis.
Regarding Claim 18 (line 19), please change the recitation of “said helical peripheral surface of said first helical radial projection” to - - said helical peripheral surface of said [[first]] second helical radial projection - - to correct minor informalities regarding antecedent basis.
Regarding Claim 18 (line 22), please change the recitation of “at regions of rolling contact” to - - at the regions of rolling contact - - to correct minor informalities regarding antecedent basis.
Regarding Claim 20 (line 1), please change the recitation of “The rotary drive arrangement according to claim 18” to - - The annular rotary element
Regarding Claim 20 (line 3), please change the recitation of “coaxially about a. rotary axis thereof” to - - coaxially about [[a]] the rotary axis thereof - - to correct minor informalities regarding antecedent basis.
Regarding Claim 21 (line 4), please change the recitation of “coaxial with that of annular rotary element” to - - coaxial with that of the annular rotary element - - to correct minor informalities regarding antecedent basis.
Regarding Claim 22 (lines 5-6), please change the recitation of “each helical surface having a profile in a radial plane which is inclined to a tangent” to - - each helical surface having a respective profile in a respective radial plane which is inclined to a respective tangent - - to correct minor informalities regarding antecedent basis.
Regarding Claim 22 (lines 10-11), please change the recitation of “planetary rotary element has at least two helical projections” to - - the internal rotary element is a planetary rotary element that has at least two helical projections - - to correct minor informalities regarding antecedent basis.
Regarding Claim 22 (lines 15-16), please change the recitation of “each helical surface having a profile in a radial plane which is inclined to a tangent” to - - each helical surface having a respective profile in a respective radial plane which is inclined to a respective tangent - - to correct minor informalities regarding antecedent basis.
Regarding Claim 22 (lines 17-18), please change the recitation of “and the sun rotary element has at least two said helical projections” to - - and [[the]] a sun rotary element has at least two [[said]] helical projections - - to correct minor informalities regarding antecedent basis.
Regarding Claim 22 (lines 20-21), please change the recitation of “each helical surface having a profile in a radial plane which is inclined to a tangent” to - - each helical surface having a respective profile in a respective radial plane which is inclined to a respective tangent - - to correct minor informalities regarding antecedent basis.
Regarding Claim 22 (lines 27-28), please change the recitation of “engage with helical peripheral surfaces of the planetary rotary element” to - - engage with the helical peripheral surfaces of the planetary rotary element - - to correct minor informalities regarding antecedent basis.
Regarding Claim 22 (lines 29-30), please change the recitation of “engage with helical peripheral surfaces of the sun rotary element” to - - engage with the helical peripheral surfaces of the sun rotary element - - to correct minor informalities regarding antecedent basis.
Regarding Claim 24 (line 1), please change the recitation of “The rotary drive arrangement according to claim 20” to - - The annular rotary element
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-24 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 17 (lines 5-6), the recitation of “whereby in use with an internal rotary element having a corresponding external helical radial projection of same sense” lacks proper written description. Applicant has not pointed out where the amended claim is supported, nor does there appear to be a written description of the claim limitation “a corresponding external helical radial projection of same sense” (emphasis added) in the application as filed. Applicant could recite “whereby in use with an internal rotary element having a corresponding external helical radial projection of [[same]] opposite sense”. Support for such an amendment can be found at ¶ [0028] of the Applicant’s published application. See MPEP 2163(II)(A) - Read and Analyze the Specification for Compliance with 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph.
Regarding Claim 19 (line 6), the recitation of “an internal rotary element having a corresponding external helical radial projection of same sense” lacks proper written description. Applicant has not pointed out where the amended claim is supported, nor does there appear to be a written description of the claim limitation “a corresponding external helical radial projection of same sense” (emphasis added) in the application as filed. Applicant could recite “an internal rotary element having a corresponding external helical radial projection of [[same]] opposite sense”. Support for such an amendment can be found at ¶ [0028] of the Applicant’s published application. See MPEP 2163(II)(A) - Read and Analyze the Specification for Compliance with 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph.
Claims 18 and 20-24 are rejected based upon their dependency to a rejected base claim.
Response to Arguments
The Applicant's arguments filed December 23rd, 2025 are in response to the Office Action mailed October 16th, 2025 and the interview conducted on December 22nd, 2025. The Applicant's arguments have been fully considered.
Response to Claim Objections
Regarding Claims 1-16, 18 and 20-26, Applicant’s amendment addresses various minor informalities previously indicated in the latest Office Action. However, see new claim objections necessitated by Applicant’s amendment.
Response to Claim Rejections - 35 USC § 112
Regarding Claims 2-3, 5, 7, 9-10, 13-14, 18 and 20-24, Applicant’s amendment has clarified the invention. However, see new claim objections necessitated by Applicant’s amendment. As such, the relevant 112(b) rejections previously indicated in the latest Office Action are withdrawn.
In conclusion, amended claims 17-24 are rejected. See detailed and relevant rejections set forth above. Amended claims 1-16 and 25-26 are allowed. See allowable subject matter set forth below.
Allowable Subject Matter
Claims ---1-16 and 25-26 are allowed.
Claims 17-24 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 1st paragraph, set forth in this Office Action and rewritten in independent form including all of the limitations of the base claim and any intervening claims. See Examiner’s proposed amendments above.
Reasons for allowance, if applicable, will be the subject of a separate communication to the Applicant or patent owner, pursuant to 37 CFR § 1.104 and MPEP § 1302.14.
As allowable subject matter has been indicated, Applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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 James J. Taylor II whose telephone number is (571)272-4074. The examiner can normally be reached M-F, 9:00 am - 5:00 pm EST.
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, Ernesto Suarez can be reached at 571-270-5565. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JAMES J. TAYLOR II
Primary Examiner
Art Unit 3655
/JAMES J TAYLOR II/Primary Examiner, Art Unit 3655