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 .
Status of Claims
This office action is in response to the amendments/remarks filed on 06/03/2026. Claims 4-5 are pending; claims 4-5 have been amended; claim 1-3 are canceled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/03/2026 has been entered.
Specification
The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “second switching plate”.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “second switching plate is disposed between the first brake and second brake in axial direction” in claim 4 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 4-5 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 4 recites “the second switching plate is disposed between the first brake and the second brake in an axial direction” in line 9-10. The recited limitation comply with the enablement requirement in view of Wands factors: (1) amount of direction provided by the inventors: the specification describes “second switching mechanism SWM2”, see ¶[0033]-USPGPUB, but never described where the second switching plate is located; (2) Existence of working examples: the only working example as shown in Fig.4a-4c describes a first switching plate for first brake. There is no example of second switching plates between the two brakes in axial direction driving two brakes; (3) state of prior art: the prior art does not show two independent ring shape switching plates on a single worm wheel switching two different brakes; (4) level of predictability in the art: there is no structure of how two plates fit on the worm wheel and how do they operate (e.g. do they rotate together with worm wheel). One of the ordinary skill would not know whether the plates are stacked, radially nested or some other configuration. Taking these factors into account, one of ordinary skill in the art could not make and use the claimed invention without exercising undue experiment.
Claim 5 is also rejected due to their dependency from claim 4.
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.
Claims 4-5 are 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 4 recites “the second brake has a second switching plate” in line 7. It is unclear how many switching plates are required; whether the first and second brakes share a switching plate or have separate plates.
Claim 5 is also rejected due to their dependency from claim 4.
Response to Amendment/Argument
Applicant’s arguments, see pages with respect to the amendment to claim(s) 4-5 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made (see rejections above).
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
KISHIDA (US 20220268358 A1) discloses switching plate 77 that rotates circumferentially is disposed between components and switches the engagement state of a brake; while Hohn’s devices uses axially moving sliding sleeve. These two references operate on different mechanical principles for engagement. Thereof, it would not obvious combination because it would require redesign the entire locking mechanism of Hohn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lillian T Nguyen whose telephone number is (571)270-5404. The examiner can normally be reached Monday-Friday, 8:30am-5pm.
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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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/LILLIAN T NGUYEN/Examiner, Art Unit 3655a
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