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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/27/2026 has been entered.
Election/Restrictions
Applicant’s election without traverse of Species 1 (Fig.1) in the reply filed on 7/31/2025 was previously acknowledged in the previous 8/29/2025 Office Action.
Claim 23 remains withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim.
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 17, 19-22, and 24-33 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 17 requires “the second toothing of the second transmission element is designed such that the second toothing, in interaction with the third toothing of the third transmission element forms a self-locking of the locking transmission” (last three lines of claim 17). However, applicant has not established possession of the claim by reduction to practice or sufficient drawings/description. Rather, applicant’s second transmission element is merely disclosed to be a worm/gear without any specific structural toothing details necessary to perform the self-locking function. The remaining claims depend from claim 17 and are thus similarly rejected
Claim 33 requires “at least one sensor configured to detect a blockage of the actuating drive”. However, applicant has not established possession of the claim by reduction to practice or sufficient drawings/description. Rather, applicant’s sensor is merely disclosed to be “a rotational angle sensor, and/or an end-position sensor” without any specific sensor structure capable of performing the blockage detection function.
See MPEP 2163.03(V) which states in part: “An original claim may lack written description support when (1) the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved or (2) a broad genus claim is presented but the disclosure only describes a narrow species with no evidence that the genus is contemplated… The written description requirement is not necessarily met when the claim language appears in ipsis verbis in the specification. ‘Even if a claim is supported by the specification, the language of the specification, to the extent possible, must describe the claimed invention so that one skilled in the art can recognize what is claimed. The appearance of mere indistinct words in a specification or a claim, even an original claim, does not necessarily satisfy that requirement.’…”
See MPEP 2163(II)(A)(3)(a)(ii), which states in various parts:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice… reduction to drawings… or by disclosure of relevant, identifying characteristics… sufficient to show the inventor was in possession of the claimed genus…”
“[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention…”
“[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification…”
“A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus…”
“A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when… Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss…”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 merely by clearly describing one embodiment of the thing claimed… The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed…”
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 17, 19-22, and 24-33 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.
Applicant’s claim 17 requires “the second toothing of the second transmission element is designed such that the second toothing, in interaction with the third toothing of the third transmission element forms a self-locking of the locking transmission” (last three lines of claim 17). However, the second transmission element is merely disclosed to be a worm without any specific structural of any toothing species to perform the self-locking function, much less sufficient details of a representative number of toothing species required to clarify the meets and bounds of the claimed genus. See MPEP 2163.03(VI) which states:
“If the specification fails to disclose sufficient corresponding structure, materials, or acts that perform the entire claimed function, then the claim limitation is indefinite because the applicant has in effect failed to particularly point out and distinctly claim the invention as required by 35 U.S.C. 112(b)… Such a limitation also lacks an adequate written description as required by 35 U.S.C. 112(a)… because an indefinite, unbounded functional limitation would cover all ways of performing a function and indicate that the inventor has not provided sufficient disclosure to show possession of the invention.”
Claim 32 recites “the locking motor”, which lacks proper antecedent basis from either of claims 29 and 17 from which it depends, such that it is unclear which of the previously recited elements, if any, are to be the locking motor of claim 32.
Claim 33 recites “at least one sensor configured to detect a blockage of the actuating drive”. It is unclear what sensor structure is necessary to perform the function since the written disclosure fails to set forth any specific sensor blockage detection structure/configuration. To the contrary, sensor is merely disclosed to be “a rotational angle sensor, and/or an end-position sensor”.
The remaining claims depend from the above and are thus similarly unclear/rejected.
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 17, 20-22, 24-29 and 32 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Umerley US2023/0128748.
Claim 17. An actuating drive for an electrical assembly of a motor vehicle, the actuating drive comprising: a drive train (e.g., fig.3) including a drive transmission (92), the drive transmission including at least one rotatably mounted, first transmission element (96); and a locking unit (142) configured to lock the drive train, the locking unit including a self-locking locking transmission (142) that includes at least one rotatably mounted, second transmission element (142), the second transmission element being mechanically operatively connected (via 140) to the first transmission element of the drive transmission, wherein: the first transmission element of the drive transmission and the second transmission element of the locking transmission are mounted rotatably about a common axis of rotation, the first transmission element has a first toothing (toothing of 96) and the second transmission element has a second toothing (toothing of 142) which differs (differs in location, shape, etc.) from the first toothing, and the first transmission element and the second transmission element form a corotational unit (96, 142) that is mounted rotatably about the common axis of rotation, and the first transmission element and the second transmission element are non-rotatably connected to each other so that they can rotate only together and form a rotationally fixed unit (96, 142) that is mounted rotatably about the common axis of rotation, and the locking transmission includes a third transmission element (“parking lock pawl”, para.0071), which has a third toothing (pawl is a toothing within the broadest reasonable interpretation of the term) corresponding to the second toothing of the second transmission element, and the second toothing of the second transmission element is designed such that the second toothing, in interaction with the third toothing of the third transmission element forms a self-locking (interaction of 142 with pawl, para.0071) of the locking transmission (see 35 USC 112 rejection; and see MPEP 2112.01 and 2114 regarding prima facie inherency of functions in apparatus claims to prior art structure reading on claimed structure, as well as applicant’s burden to obtain/test the prior art to prove otherwise).
Claim 20. The actuating drive according to claim 17, wherein: the drive transmission includes a fourth transmission element (98), which is mounted rotatably about the common axis of rotation, and/or the first transmission element is arranged between the second transmission element and the fourth transmission element in an axial direction of the common axis of rotation.
Claim 21. The actuating drive according to claim 20, wherein the first transmission element, the second transmission element, and/or the fourth transmission element are jointly in the form of the corotational unit (96, 98 and/or 142).
Claim 22. The actuating drive according to claim 21, wherein the corotational unit is in the form of a double gear wheel (96/98) or a triple gear wheel, and/or the corotational unit is mounted rotatably about the common axis of rotation (see mounting in fig.3).
Claim 24. The actuating drive according to claim 21, wherein the corotational unit is a multi-part design (96, 98, 98), with the first, second, and fourth transmission elements of the corotational unit being interconnected (via 140 see fig.3).
Claim 25. The actuating drive according to claim 21, wherein the actuating drive further includes a housing (housing seen in fig.1 and fig.2) and a support element (portions of housing supporting bearings 130, 132) arranged in the housing.
Claim 26. The actuating drive according to claims 25, wherein the actuating drive includes at least one bearing element (130, 132) via which the corotational unit is mounted in at least one bearing region (region housing supporting bearings 130,132) of the housing and/or the support element, the corotational unit being rotatably about the common axis of rotation.
Claim 27. The actuating drive according to claim 21, wherein the actuating drive has an output shaft (20), which is formed by the fourth transmission element or is operatively connected, directly, or indirectly via at least one fifth transmission element (94) to the fourth transmission element.
Claim 28. The actuating drive according to claim 17, wherein play (inherent from tolerances between parts) is formed between the first transmission element and the second transmission element, which are connected for conjoint rotation, such that the first and second transmission elements can rotate in opposite directions in the circumferential direction of the common axis of rotation within the extent of the play (see MPEP 2112.01 and 2114 regarding prima facie inherency of functions in apparatus claims to prior art structure reading on claimed structure, as well as applicant’s burden to obtain/test the prior art to prove otherwise).
Claim 29. The actuating drive according to claim 17, wherein the drive train includes a drive motor (14) for driving the drive transmission, which is upstream of the drive transmission, and/or which is operatively connected to the drive transmission.
Claim 32. The actuating drive according to claim 29, wherein the actuating drive has a control unit (“motor controller”, “inverter”, etc.) configured to control an operation of the drive motor and the locking motor (e.g., “control a rotational speed of the rotor relative to the stator” of the drive motor, see 35 USC 112 rejection) such that the drive motor and the locking motor can be operated: asynchronously and/or with a time delay relative to one another, in at least one starting operation in order to avoid and/or release a blockage of the locking transmission, and/or synchronously, in a normal operating mode to actuate the actuating drive (see MPEP 2112.01 and 2114 regarding prima facie inherency of functions in apparatus claims to prior art structure reading on claimed structure, as well as applicant’s burden to obtain/test the prior art to prove otherwise).
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 of this title, 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 19 and 30-31 are rejected under 35 U.S.C. 103 as being unpatentable over Umerley US2023/0128748.
Claim 19. The examiner takes Official Notice that it was extremely well known in the transmission art for a second transmission element to desirably be a worm gear. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Umerley second transmission element to be a worm gear.
Claims 30 and 31. The examiner takes Official Notice that it was extremely well known in the transmission art for a park lock pawl to be driven by a locking motor that is smaller than the and/or less power than the drive motor. One of ordinary skill would easily recognize that such motorized pawls are more desirable/convenient than a non-motorized pawl and that lower size/power is lighter and more efficient than higher size/power. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the Umerley pawl to be driven by such a motor.
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Umerley US2023/0128748 and Matsuto US11054016.
Claim 33. The fig.3 locking unit embodiment of Umerley does not expressly disclose a sensor. However, such was known to have been desirable as is taught by other embodiments of Umerley, and/or by Matsuto, as follows:
The fig.13A-B embodiment of Umerley teaches at least one sensor (SS, SE, ST) configured to detect a blockage of the actuating drive (see 35 USC 112 rejection; and see MPEP 2112.01 and 2114 regarding prima facie inherency of functions in apparatus claims to prior art structure reading on claimed structure, as well as applicant’s burden to obtain/test the prior art to prove otherwise).
Matsuto teaches that it was well known in the actuating drive art to be desirable for a locking unit (61) to include at least one sensor (69, 70, 83) configured to detect a blockage of the actuating drive (see 35 USC 112 rejection; and see MPEP 2112.01 and 2114 regarding prima facie inherency of functions in apparatus claims to prior art structure reading on claimed structure, as well as applicant’s burden to obtain/test the prior art to prove otherwise).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the figure 3 Umerley embodiment to have a sensor as claimed, in light of the teachings of the fig.13A-B embodiment of Umerley and/or by Matsuto, for the purpose allowing for sensing positions/conditions of elements and improving control thereof.
Response to Arguments
Applicant’s arguments have been carefully considered but are moot in view of the new grounds of rejection.
Conclusion
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
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