Prosecution Insights
Last updated: October 23, 2026
Application No. 18/997,309

PLANETARY GEARBOX AND WIND POWER APPARATUS

Non-Final OA §102§103§112
Filed
Jan 21, 2025
Priority
Jul 22, 2022 — nonprovisional of PCTCN2022107375
Examiner
LE, HUAN G
Art Unit
3655
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Schaeffler Technologies AG & Co. KG
OA Round
1 (Non-Final)
88%
Grant Probability
Favorable
1-2
OA Rounds
3m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 88% — above average
88%
Career Allowance Rate
732 granted / 828 resolved
+36.4% vs TC avg
Moderate +14% lift
Without
With
+13.6%
Interview Lift
resolved cases with interview
Fast prosecutor
2y 0m
Avg Prosecution
12 currently pending
Career history
848
Total Applications
across all art units

Statute-Specific Performance

§101
1.3%
-38.7% vs TC avg
§103
22.1%
-17.9% vs TC avg
§102
27.3%
-12.7% vs TC avg
§112
43.5%
+3.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 828 resolved cases

Office Action

§102 §103 §112
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 . DETAILED CORRESPONDENCE This is the first Office Action on the merits of Application 18/997,309 filed on 1/21/25. Claims 1-3, 5-9 & 11-17 are pending. Claims 4 & 10 have been cancelled due to a preliminary amendment. Specification Applicant is reminded of the proper language and format for an abstract of the disclosure. The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details. The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. The abstract of the disclosure is objected to because it contains reference characters. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). Information Disclosure Statement The information disclosure statement (IDS) submitted on 1/21/25 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Drawings The drawings are objected to because the arrows should be touching a line or surface should be shown by the line looking along the direction of the arrow according to 37 CFR 1.84 (r)(2). 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. Note: The arrows should be pointing towards a surface/line and not the reference number. Claim Objections Claim 11 is objected to because of the following informalities: Claim 11 Line 4: “gear is mount” should be amended as – gear is mounted --. Appropriate correction is required. 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 1-3 & 5-9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for an outer circumferential surface of the planetary shaft in a radial contact area between the planetary gear and the planetary shaft does not reasonably provide enablement for an outer circumferential surface of the planetary shaft in an axial contact area between the planetary gear and the planetary shaft. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims. Figures 1-2c disclose the modification areas (e.g. 101 & 102) located on the outer circumferential surface of the planetary shaft. However, the specification does not disclose how the modification area is axial in contact with the planetary gear (e.g. 50). One of ordinary skill the art would not be able to make/ and or use the invention commensurate in scope with these claims. Note: It appears that the modification area would be in radial contact with the planetary gear and not in axial contact. Claims 2, 3 & 5-9 are also rejected for being dependent upon a rejected base claim. Claim Rejections - 35 USC § 102 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 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. Claims 1-3, 5, 11 & 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 216045382 to Liu et al (applicant cited reference). Claim 1 Liu discloses in Figs 1-3 A planetary gearbox for a wind power apparatus, comprising a planetary shaft (e.g. 1), a planetary gear (e.g. 7) and a planetary carrier (e.g. 2), wherein the planetary shaft is mounted on the planetary carrier, and the planetary gear is mounted on the planetary shaft ; and at least one modification area (e.g. see area 1 shown in Figure 2) is provided on at least one of an inner circumferential surface of the planetary gear (50) and/or and an outer circumferential surface of the planetary shaft (see Fig 2) in an axial contact area (e.g. as best understood, radial contact) between the planetary gear and the planetary shaft. Claim 2 The planetary gearbox of claim 1, wherein a circumferential oil groove (e.g. 8) is provided in the middle of the axial contact area (e.g. radial contact area as best understood) between the planetary gear and the planetary shaft ; and the axial contact area includes a first contact area (e.g. left area of 8) and a second contact area (e.g. right area of 8) that are provided on respective axial sides of the circumferential oil groove, and the at least one modification area is provided in at least one of the first contact area and/or and the second contact area. Claim 3 The planetary gearbox of claim 2, wherein the at least one modification area includes a first modification area and a second modification area (e.g. left and right areas of 8), and wherein the first modification area is provided in at least a portion of the first contact area, and the second modification area is provided in a least a portion of the second contact area. Claim 5 The planetary gearbox of claim 3,wherein the first modification area and the second modification area are symmetric to each other with respect to the circumferential oil groove in the axial direction (see Fig 2). Claim 11 A planetary gearbox, comprising: a planetary carrier (e.g. 2); a planetary gear (e.g. 7); and a planetary shaft (e.g. 1) to which the planetary gear is mount and that is mounted on the planetary carrier, the planetary shaft having, on an outer circumferential surface of the planetary shaft, a first contact area (e.g. 1, left of 8, Fig 2) for engaging an inner circumferential surface of the planetary gear (see Fig 3), a second contact area (e.g. 1, right of 8, Fig 2) for engaging the inner circumferential surface of the planetary gear, and a circumferentially extending oil groove (e.g. 8) disposed axially between the first and second contact areas, wherein the first contact area includes a first modification area that extends a first axial distance from the oil groove and is radially offset from a portion of the first contact area that is adjacent to the first modification area opposite the oil groove, and the second contact area includes a second modification area that extends a second axial distance from the oil groove and is radially offset from a portion of the second contact area that is adjacent to the second modification area opposite the oil groove (see Fig. 3). Claim 13 The planetary gearbox of claim 11, wherein the first axial distance is equal to the second axial distance (see Fig 2, even axial distance for both sides). Claim Rejections - 35 USC § 103 In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. 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, 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 7, 12, 16 & 17 are rejected under 35 U.S.C. 103 as being unpatentable over CN 216045382 to Liu et al (applicant cited reference). Claim 7 Liu discloses a planetary gear box with a planetary shaft, planetary gear, and planetary carrier. Further at least one modification area provided on the outer circumferential surface of the planetary gear shaft. Liu however, does not explicitly disclose that the modification area is provided with at least one hard coating and a bronze cladding. It would have been obvious for one having ordinary skill in the art before the claims were effectively filed to have the modification area be of at least one hard coating and a bronze cladding, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Claim 12 Liu does not explicitly disclose that the first axial distance is less than the second axial distance. It would have been obvious for one having ordinary skill in the art before the claims were effectively filed to have the first axial distance is less than the second axial distance since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). Claims 16 & 17 Liu however, does not explicitly disclose that the modification area is provided with at least one hard coating and a bronze cladding. It would have been obvious for one having ordinary skill in the art before the claims were effectively filed to have the modification area be of at least one hard coating and a bronze cladding, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416. Allowable Subject Matter Claims 6, 8, 9, 14 & 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to HUAN LE whose telephone number is (571)270-3122. The examiner can normally be reached on Monday - Friday 9:00am - 5:00pm PST. 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, Jacob Scott can be reached on 571-270-3415. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /HUAN LE/Primary Examiner, Art Unit 3655
Read full office action

Prosecution Timeline

Jan 21, 2025
Application Filed
Oct 07, 2026
Non-Final Rejection mailed — §102, §103, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
88%
Grant Probability
99%
With Interview (+13.6%)
2y 0m (~3m remaining)
Median Time to Grant
Low
PTA Risk
Based on 828 resolved cases by this examiner. Grant probability derived from career allowance rate.

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