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 with traverse of the Group I system (claims 1-5) and Species 1 (figs.1-5C) in the reply filed on 1/6/2026 is acknowledged. The traversal is on the grounds that the functional limitations added to the last lines of each of the independent claims by preliminary amendment are not met by the prior art such that the inventions have unity. This is not persuasive.
Firstly, see the 35 USC 112 rejections elsewhere below on p.4, ll.9-17 and note that the functions in question are unclear as to what structural configuration of the fork is necessary to perform the functions (i.e., “the fork is configured… such that the parking lock splines are engaged with the lock plate splines while the disconnect splines are engaged with the splines on the gear”). Taking the claim on its face, as best understood, the fork is the only structure claimed as being necessary to perform the functions. Since the prior art fork (e.g., fork of FR2963651) has all of the claimed fork structural details (i.e., applicant does not claim any substantial fork structural details), the prior art fork is properly presumed to be inherently capable of performing the claimed fork functions thereby establishing a prima facie case of anticipation or obviousness in accordance with MPEP 2112.01 and 2114.
Secondly, even if the claims were to be amended to clarify some other structure as being needed to perform the functions (e.g., such as the examiner’s suggested correction detailed in the 35 USC 112 rejection elsewhere below on p.4, ll.9-17), note that the newly found art to Ikushima US10569761, as applied in the 35 USC 103 rejections elsewhere below, expressly discloses the functions in question without need for any presumption of inherency.
Accordingly, all features common between the independent claims of the inventions are suggested by the prior art such that there are no special technical features and thus no unity of invention. The requirement is still deemed proper and is therefore made FINAL.
Claims 6-11 and 13-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 1/6/2026.
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.
Claims 1-5 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.
The claim 1 limitation “the motor and configured to convert rotary motion of the motor to axial motion along a shift rail” is contrary to the disclosure and thus unclear. The figures do not depict the motor of actuator (1110) as having any axial motion along the rail (1105). Rather it appears that only fork (1100) incurs axial motion.
See MPEP 2173.03 which states that a claim may be "indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty.
The claim 1 limitation “the lock plate” lacks proper antecedent basis and is thus unclear as to which previously recited element (e.g., lock plate teeth?), if any, is to be the lock plate.
See MPEP 2173.05(e) which states "A claim which refers to "said aluminum lever," but recites only "a lever" earlier in the claim, is indefinite because it is uncertain as to the lever to which reference is made… even though indefiniteness in claim language is of semantic origin, it is not rendered unobjectionable simply because it could have been corrected. In re Hammack, 427 F.2d 1384, 1388 n.5, 166 USPQ 209, 213 n.5 (CCPA 1970).”
The claim 1 limitation “wherein the fork is configured to move the sleeve such that the parking lock splines are engaged with the lock plate splines while the disconnect splines are engaged with the splines on the gear” is contrary to the disclosure and thus unclear (See MPEP 2173.03, quoted several paragraphs above). While the figures show a fork configured to move the sleeve, the figures fail to show any specific fork structure/configuration responsible for the claimed spline engagement functions. Rather it appears that the sleeve structure/arrangement is responsible for such functions. The examiner suggests amending to recite --wherein the fork is configured to move the sleeve, and the sleeve is configured such that the parking lock splines can engage with the lock plate splines while the disconnect splines are engaged with the splines on the gear--.
Claim 2 recites “the detents having positions that correspond to: a first condition… and a second condition…” which is unclear as to what manner the positions correspond to the conditions (correspond in shape, location, timing, causation, etc.)
Claim 3 recites “when the system is in the first condition” which is unclear since the first condition was previously set forth in claim 2 with regard to the vehicle/wheels rather than the system. Note that the claims set forth the system and vehicle as distinct rather than being the same element. The examiner suggests amending claim 2 to specify --the system being in a first condition-- so as to better support claim 3.
Claim 4 recites “when the system is in the second condition” which is unclear since the second condition was previously set forth in claim 2 with regard to the vehicle/wheels rather than the system. Note that the claims set forth the system and vehicle as distinct rather than being the same element. The examiner suggests amending claim 2 to specify --the system being in a second condition-- so as to better support claim 4.
Claim 5 depends from the above and is thus similarly unclear/rejected.
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.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Ikushima US10569761 in view of Zhang CN111043301 and Liu CN110985665.
Claim 1. Ikushima discloses a system for providing an axle disconnect and a park lock in a vehicle, comprising: a motor (78); a shaft (28); a gear (36) mounted on the shaft; a bearing (36b) between the shaft and the gear; splines (66a) on the gear; a screw mechanism (80) connected to the motor and configured to convert rotary motion of the motor to axial motion along a shift rail (74, see 35 USC 112 rejection); a fork (72) mounted on the shift rail; lock plate splines (70a); and a sleeve (62) on the shaft between the lock plate (plate of 20a supporting 70 thereon, see 35 USC 112 rejection) and the gear, the sleeve having parking lock splines (62d) and disconnect splines (62b); wherein the fork is configured to move the sleeve such that the parking lock splines are engaged with the lock plate splines while the disconnect splines are engaged with the splines on the gear (see fig.3, see 35 USC 112 rejection). Ikushima does not expressly state that the screw mechanism is a ball type screw mechanism. However, 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 Ikushima screw mechanism to be a ball screw mechanism since Zhang and Liu each teach a ball screw mechanism (Zhang, 6, 7; and/or Liu, 4) that would be desirable/obvious over higher friction/wear/failure prone non-ball type screws (see “Background” section of the English translation of Zhang attached to this Office Action).
Claim 2. Ikushima does not disclose a biasing arrangement. Liu teaches that it was known to be desirable to provide a biasing arrangement (6, 10) including a ball (steel ball at end of spring 6 in hole 10) and a plurality of detents (12, 13) on the shift rail (7), the detents having positions that correspond to: a first condition (“neutral position mark location 13”) where wheels of the vehicle are not coupled to a motive source and the wheels are free to rotate; and a second condition (“gearshift position mark location 12”) where the wheels of the vehicle are coupled to the motive source and the wheels are not free to rotate. Liu further teaches that such biasing arrangement is desirable/obvious to conveniently and accurately control shifting action (see English translation of Liu attached to this Office Action). 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 Ikushima to have a biasing arrangement, such as that taught by Liu, for the purpose of convenient/accurate shifting.
Claim 3. The system of claim 2, wherein, when the system is in the first condition, the sleeve is positioned so that the parking lock splines (Ikushima, 62d) are not engaged with the lock plate splines (Ikushima, 70a) and the disconnect splines (Ikushima, 62b) are not engaged with the splines (Ikushima, 66a) on the gear (as seen in Ikushima fig.4), and the ball is located in a first detent (Liu, “neutral position mark location 13”) of the plurality of detents (as would necessarily/obviously result from the modification in claim 2 above).
Claim 4. The system of claim 3, wherein, when the system is in the second condition, the sleeve is positioned so that the parking lock splines (Ikushima, 62d) are engaged with the lock plate splines (Ikushima, 70a) and the disconnect splines (Ikushima, 62b) are engaged with the splines (Ikushima, 66a) on the gear (as seen in Ikushima fig.3), and the ball is located in a second detent (“gearshift position mark location 12”) of the plurality of detents.
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The art of record does not suggest the totality of limitations, does not provide any teaching, suggestion or motivation to modify toward the entirety of applicant's claims, nor was there any readily apparent cogent reasoning that is unequivocally independent of hindsight that would have led one of ordinary skill in the art at the time the invention was made to modify the prior art to obtain the entirety of applicant’s claimed invention.
Note that if applicant wishes to have the withdrawn claims rejoined upon an allowance based on the allowable subject matter noted above, applicant should carefully review all withdrawn claims for clarity issues and amend them to have all of the limitations of an allowed claim, either by dependency therefrom or express recitation.
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