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 .
Election/Restrictions
Applicant’s election without traverse of Species 1 (Fig.1) in the reply filed on 10/28/2025 is acknowledged.
Claims 1-15 have been canceled by applicant.
Claims 16-30 are examined below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Claims 16-30 set forth limitations that meet the three-prong test set forth in MPEP § 2181 (I) and will be interpreted under 35 U.S.C. 112(f).
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f), because the claim limitations use a generic placeholder “control unit” that is coupled with functional language without reciting sufficient structure to perform the recited functions and the generic placeholder is not preceded by a structural modifier. Such claim limitations are as follows:
Claim 16. “a control unit configured to control an operation of the drive motor and the locking motor such that the drive motor and the locking motor can be operated, in a starting operation, asynchronously and/or with a time delay relative to one another”.
Claim 17. “the control unit is further configured to contol [sic] the operation of the drive motor and the locking motor such that the drive motor and the locking motor can be operated, in a normal operation, synchronously and/or simultaneously”.
Claim 20. “the control unit is configured to control the operation of the drive motor and the locking motor such that the drive motor and the locking motor can be operated, during a restart after a period of inactivity and/or upon a reversal of a direction of rotation of the actuating drive, first in the starting operation and, thereafter, in the normal operating mode to actuate the actuating drive.”
Claim 21. “the control unit is configured such that, during the normal operation, the control unit operates the locking motor such that a first tooth flank of a third transmission element of the locking transmission precedes a corresponding first tooth flank of a second transmission element of the locking transmission and/or that a second tooth flank of the third transmission element follows a corresponding second tooth flank of the second transmission element.”
Claims 22. “the control unit is configured to, in the first starting operation in order to avoid and/or release a blockage of the locking transmission, energize the locking motor first and, after a first time frame, energize the drive motor, the first time frame being stored in the control unit or established by the control unit.”
Claim 23 depends from claim 22 and further limits the control unit functioning “wherein the locking motor is energized first in the first starting operation such that a third transmission element of the locking transmission is rotated in a direction of rotation which corresponds to a planned actuating motion of the actuating drive, so that a tooth flank of the third transmission element that is adjacent to or in contact with a corresponding tooth flank of a second transmission element of the locking transmission moves away from the corresponding tooth flank of the second transmission element.”
Claim 24 depends from claim 23 and continues the control unit functioning “wherein the drive motor is energized in the first starting operation after the first time frame such that the second transmission element is rotated in a direction of rotation that corresponds to the planned actuating motion of the actuating drive, so that the tooth flank of the second transmission element follows the corresponding tooth flank of the third transmission element.”
Claim 25 depends from claim 24 and continues the control unit functioning “wherein the first time frame is established and/or determined such that rotation of the second transmission element begins before another tooth flank of the third transmission element, which is moving towards the corresponding tooth flank of the second transmission element, collides with the corresponding tooth flank of the second transmission element.”
Claim 26. “the control unit is configured to, in the second starting operation in order to avoid and/or release a blockage of the locking transmission, first energize the drive motor, and after a second time frame stored in the control unit or established by the control unit, the control unit is configured to energize the locking motor and/or, simultaneously with or after the energization of the locking motor, reverse the direction of rotation of the drive motor.”
Claim 27 depends from claim 26 and continues the control unit functioning “wherein the drive motor is energized first in the second starting operation such that a second transmission element of the locking transmission is rotated in a direction of rotation that corresponds to or is opposite a planned actuating motion of the actuating drive, so that a tooth flank of the second transmission element that is adjacent to or in contact with a corresponding tooth flank of a third transmission element of the locking transmission moves away from the corresponding tooth flank of the third transmission element.”
Claim 28 depends from claim 27 and continues the control unit functioning “wherein the drive motor, in the second starting operation, when the second transmission element has been rotated in a direction of rotation opposite the planned actuating motion of the actuating drive, is subsequently energized such that the direction of rotation thereof reverses, so that the second transmission element rotates in the direction of rotation corresponding to the planned actuating motion of the actuating drive.”
Claim 29 depends from claim 27 and continues the control unit functioning “wherein the locking motor is energized in the second starting operation after the second time frame such that the third transmission element is rotated in a direction of rotation that corresponds to the planned actuating motion of the actuating drive so that the tooth flank of the third transmission element follows the corresponding tooth flank of the second transmission element.”
Claim 30 depends from claim 27 and continues the control unit functioning “wherein the second time frame is established and/or determined such that the rotation of the third transmission element begins before another tooth flank of the second transmission element, which is moving towards the corresponding tooth flank of the third transmission element, collides with the corresponding tooth flank of the third transmission element.”
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they should be interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof. However, as detailed in the 35 USC 112(a) and 112(b) rejections elsewhere below, applicant’s specification fails to set forth any control unit structure capable of performing the claimed functions.
Claim Rejections - 35 USC § 112(a)
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.
Claims 16-30 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention.
Claim 16, 17 and 20-30 recite numerous limitations that invoke 35 U.S.C. 112(f). See “Claim Interpretation” section above, which is incorporated herein by reference. However, applicant does not appear to have had possession of a “control unit” as claimed to be capable of performing the claimed functions thereof. The “control unit” is described in the written description in only general terms without any description of any mechanical, computing or other control unit structure that can achieve all of the claimed functions. The functions claimed and disclosed as being achieved by the “control unit” amount to a description of the outcome, not a means for achieving that outcome as is required to establish possession. Note that the claims do not limit the ”control unit” to being any particular type of means (e.g., mechanical, computer, etc.) such that applicant’s burden under 35 USC 112(a) is to establish possession of the full breadth of the claim. It is noted that the specification discloses “The control unit 29 is electrically connected to the drive motor 3 via a first electrical line 30. Moreover, the locking motor 13 is electrically connected to the control unit 29 via a second electrical line 31”. However, mere electrical connection is insufficient to perform the claimed functions. If applicant’s control unit is a computer of some type (though such is not expressly claimed or disclosed) note that a computer-implemented means-plus-function limitation requires express disclosure of the computing hardware as well as the algorithm necessary to achieve the functions. See MPEP 2181 II B.1
The remaining claims 18 and 19 depend from claim 16 and are thus similarly rejected.
Claim Rejections - 35 USC § 112(b)
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.
Claims 16-30 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 16, 17 and 20-30 recite numerous limitations that invoke 35 U.S.C. 112(f). See “Claim Interpretation” section above, which is incorporated herein by reference. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b). See MPEP 2161.01(I).2
The claims recite the limitation “and/or” throughout the claims in a manner that is unclear as follows:
Claim 16 recites “asynchronously and/or with a time delay” which is unclear since both phrases have the same general meaning (i.e., not at the same time) such that the latter phrase does not form a proper/different alternative to the former phrase.
Claim 17 recites “synchronously and/or simultaneously” which is unclear since both terms appear to set forth substantially the same meaning, i.e., at the same time, such that it is unclear how synchronously would structurally differ from simultaneously and thus form a proper non-redundant alternative/combination.
Claim 18 recites “are jointly in the form of a corotational unit; and/or the corotational unit is mounted rotatably” is unclear mounting a corotation unit requires the corotational unit and thus cannot be an alternative “or” thereto.
Claims 22 and 26 each recite “avoid and/or release a blockage” which is unclear as to how a blockage could be avoided “and” released since the latter requires a blockage to first occur rather than be avoided.
Claim 25 recites “established and/or determined” which is unclear as to how determination can occur without establishment and thus form a proper alternative “or”.
Claim 26 also recites “energize the locking motor and/or, simultaneously with or after the energization of the locking motor, reverse the direction of rotation…” which is unclear as to what alternative “or” is to set forth since energizing the motor is required on both sides of the conjunction “or” (i.e., energization is not a proper/different alternative to energization).
The remaining claims depend from at least one of the above and are thus similarly unclear.
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.
Claims 16-30 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Masaki US6053833.
Claim 16. An actuating drive for an electrical assembly of a motor vehicle, the actuating drive comprising: a drive train (fig.1) including a drive transmission (4) and a drive motor (8) configured to drive the drive transmission; a locking unit (6, 13) configured to lock the drive train, the locking unit including a self-locking locking transmission (6, 13) that is operatively connected to the drive transmission, and a locking motor (9) configured to drive the locking transmission; and a control unit (12, 10, 11) configured to control an operation of the drive motor and the locking motor such that the drive motor and the locking motor can be operated, in a starting operation, asynchronously and/or with a time delay relative to one another. Note: The claims fail to set forth any control unit structure, much less structure lacking in the prior art control unit, such that the prior art control unit must be presumed to be inherently capable of performing the claimed control unit functions (italicized above and elsewhere in the dependent claims below) thereby establishing a prima farcie case and shifting burden to applicant to obtain/test the prior art control unit and prove the contrary in accordance with MPEP 2112.01 and 2114.
Claim 17. The actuating drive according to claim 16, wherein the control unit is further configured to control the operation of the drive motor and the locking motor such that the drive motor and the locking motor can be operated, in a normal operation, synchronously and/or simultaneously. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 18. The actuating drive according to claim 16, wherein: a first transmission element (4), a second transmission element (6), and/or a fourth transmission element (gear between 4 and 6) of the actuating drive are jointly in the form of a corotational unit (4, 6 and gear between 4 and 6); and/or the corotational unit is mounted rotatably about a common axis of rotation of the actuating drive.
Claim 19. The actuating drive according to claim 16, wherein the locking motor is smaller and/or has lower electrical power (when powered off) than the drive motor (when powered on).
Claim 20. The actuating drive according to claim 16, wherein the control unit is configured to control the operation of the drive motor and the locking motor such that the drive motor and the locking motor can be operated, during a restart after a period of inactivity and/or upon a reversal of a direction of rotation of the actuating drive, first in the starting operation and, thereafter, in the normal operating mode to actuate the actuating drive. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 21. The actuating drive according to claim 16, wherein the control unit is configured such that, during the normal operation, the control unit operates the locking motor such that a first tooth flank of a third transmission element of the locking transmission precedes a corresponding first tooth flank of a second transmission element of the locking transmission and/or that a second tooth flank of the third transmission element follows a corresponding second tooth flank of the second transmission element. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 22. The actuating drive according to claim 16, wherein the starting operation comprises a first starting operation, wherein the control unit is configured to, in the first starting operation in order to avoid and/or release a blockage of the locking transmission, energize the locking motor first and, after a first time frame, energize the drive motor, the first time frame being stored in the control unit or established by the control unit. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 23. The actuating drive according to claim 22, wherein the locking motor is energized first in the first starting operation such that a third transmission element of the locking transmission is rotated in a direction of rotation which corresponds to a planned actuating motion of the actuating drive, so that a tooth flank of the third transmission element that is adjacent to or in contact with a corresponding tooth flank of a second transmission element of the locking transmission moves away from the corresponding tooth flank of the second transmission element. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 24. The actuating drive according to claim 23, wherein the drive motor is energized in the first starting operation after the first time frame such that the second transmission element is rotated in a direction of rotation that corresponds to the planned actuating motion of the actuating drive, so that the tooth flank of the second transmission element follows the corresponding tooth flank of the third transmission element. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 25. The actuating drive according to claim 24, wherein the first time frame is established and/or determined such that rotation of the second transmission element begins before another tooth flank of the third transmission element, which is moving towards the corresponding tooth flank of the second transmission element, collides with the corresponding tooth flank of the second transmission element. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 26. (Currently Amended) The actuating drive according to claim 16, wherein the starting operation comprises a second starting operation, wherein the control unit is configured to, in the second starting operation in order to avoid and/or release a blockage of the locking transmission, first energize the drive motor, and after a second time frame stored in the control unit or established by the control unit, the control unit is configured to energize the locking motor and/or, simultaneously with or after the energization of the locking motor, reverse the direction of rotation of the drive motor. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 27. The actuating drive according to claim 26, wherein the drive motor is energized first in the second starting operation such that a second transmission element of the locking transmission is rotated in a direction of rotation that corresponds to or is opposite a planned actuating motion of the actuating drive, so that a tooth flank of the second transmission element that is adjacent to or in contact with a corresponding tooth flank of a third transmission element of the locking transmission moves away from the corresponding tooth flank of the third transmission element. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 28. The actuating drive according to claim 27, wherein the drive motor, in the second starting operation, when the second transmission element has been rotated in a direction of rotation opposite the planned actuating motion of the actuating drive, is subsequently energized such that the direction of rotation thereof reverses, so that the second transmission element rotates in the direction of rotation corresponding to the planned actuating motion of the actuating drive. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 29. The actuating drive according to claim 27, wherein the locking motor is energized in the second starting operation after the second time frame such that the third transmission element is rotated in a direction of rotation that corresponds to the planned actuating motion of the actuating drive so that the tooth flank of the third transmission element follows the corresponding tooth flank of the second transmission element. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Claim 30. The actuating drive according to claim 27, wherein the second time frame is established and/or determined such that the rotation of the third transmission element begins before another tooth flank of the second transmission element, which is moving towards the corresponding tooth flank of the third transmission element, collides with the corresponding tooth flank of the third transmission element. See the note at end of the explanation of claim 16 above regarding inherency of functional limitations.
Conclusion
The prior art made of record on the attached PTO-892 (if any) and not relied upon above is considered pertinent to applicant's disclosure due general structural similarity thereto.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
1 MPEP 2181 II B states, in parts, “An algorithm is defined, for example, as ‘a finite sequence of steps for solving a logical or mathematical problem or performing a task… Applicant may express the algorithm in any understandable terms including as a mathematical formula, in prose, in a flow chart, or in any other manner that provides sufficient structure… In several Federal Circuit cases, the patentees argued that the requirement for the disclosure of an algorithm can be avoided if one of ordinary skill in the art is capable of writing the software to convert a general purpose computer to a special purpose computer to perform the claimed function… Such argument was found to be unpersuasive because the understanding of one skilled in the art does not relieve the patentee of the duty to disclose sufficient structure to support means-plus-function claim terms… A patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function… [C]onsideration of the understanding of one skilled in the art in no way relieves the patentee of adequately disclosing sufficient structure in the specification… The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps… language that simply describes the function to be performed describes an outcome, not a means for achieving that outcome… implicit or inherent disclosure of a class of algorithms for performing the claimed functions is not sufficient, and the purported "one-step" algorithm is not an algorithm at all”.
2 See MPEP 2161.01(I) which states that if the specification does not provide a disclosure of sufficient corresponding structure, materials, or acts that perform the entire claimed function of a means- (or step-) plus- function limitation in a claim under 35 U.S.C. 112(f) the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b) and a rejection under 35 U.S.C. 112(b) must be made in addition to the written description rejection. The MPEP citing In re Donaldson Co., 16 F.3d 1189, 1195, 29 USPQ2d 1845, 1850 (Fed. Cir. 1994) (en banc). See also MPEP 2181(II)(B) which further regards computer-implemented Means-plus-function limitations.
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