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 .
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 1-9 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.
The claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. For instance, note the following examples:
The claims recite numerous labels for the same element. For example, in claim 1 it appears that both “inner diameter side member” and “support bearing” may refer to the same element; and the “first direction” and “biasing direction” may both refer to a common direction; and the “outer diameter side member” and “worm accommodating portion” may both refer to the same element; and the “load point” and “contact portion” may refer to a common point/portion, etc. See MPEP 2173.05(o) which states "where a claim directed to a device can be read to include the same element twice, the claim may be indefinite. Ix parte Kristensen, 10 USPQ2d 1701 (Bd. Pat. App. & Inter. 1989)".
The claims recite relative terminology such as “a far side” in claim 1. The specification does not provide a standard for ascertaining the requisite degree of “far”, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. See MPEP 2173.05(b).
The claims recite numerous limitations without expressly attributing to any particular element. For instance, claim 1 recites “toward the worm wheel”, “in a portion”, “having a load point that is a contact portion”, and “exhibiting a non-linear spring characteristic” without express recitation of what element or elements are to be limited thereby.
In response to this action, applicant must carefully review all claims and correct all instances of unclear double inclusion, relative terminology, and unattributed limitations (not only the examples above).
Claim Rejections - 35 USC § 102/103
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.
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 and 6-9 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Fujita JP2018204661.
As noted in the 35 USC 112 clarity rejections elsewhere above, substantial uncertainty exists as to numerous limitations throughout the claims. In accordance with MPEP § 2173.06 the examiner applies the prior art in the interest of compact prosecution. However, a mapping of the art to every limitation of the claims would require improper speculation and assumption as to claim meaning and scope.1 Furthermore, the prior art is not overly complex and lies in the same general field as applicant's claimed invention such that the pertinence of the art to applicant's invention should be readily apparent without such exhaustive mapping.2 The prior art structure bolded below is presumed inherently capable of the claimed functions/properties.3
Claim 1. Fujita discloses a worm reducer, comprising: a housing (9) having a wheel accommodating portion (28) and a worm accommodating portion (26) having a central axis that is at a skewed position relative to a central axis of the wheel accommodating portion and an intermediate portion (between 28 and 26) in an axial direction that opens into the wheel accommodating portion; a worm wheel (18) having wheel teeth (27) on an outer circumferential surface thereof and rotatably supported inside the wheel accommodating portion; a worm (17) having worm teeth (25) on an outer circumferential surface thereof that engage with the wheel teeth and is rotatably supported inside the worm accommodating portion; a support bearing (19, 20) externally fitted onto a tip-end portion of the worm; and a biasing plate spring (42) configured to bias an inner diameter side member (20), that is the support bearing or an outer fitting member (33) externally fitted onto the support bearing, toward the worm wheel; the biasing plate spring arranged on a far side from the worm wheel in a first direction, that is a biasing direction of the biasing plate spring, in a portion between an outer circumferential surface of the inner diameter side member and an inner circumferential surface of an outer diameter side member (26, 48, 49) that is the worm accommodating portion or an inner fitting member internally fitted into the worm accommodating portion; having a load point that is a contact portion with the outer circumferential surface of the inner diameter side member, and a fulcrum (e.g., at 42/49 in fig.4A and/or at 42/51 in fig.4B; or 42/56 in fig.8A vs. fig.8B) that is a portion of contact portions in contact with the inner circumferential surface of the outer diameter side member that is located at a position closest to the load point; and exhibiting a non-linear (at period inflection between K1/K2 in fig.5) spring characteristic in which a spring constant increases as a position of the fulcrum changes to approach the load point as an amount of deflection in the first direction increases (see fig.5 depiction of spring constant change K1 vs K2, and also see the English translation attached to this Office action, which states “The spring constant of the leaf spring 42 changes stepwise to K2, which is larger than K1, after the tip of the leaf spring 42 abuts against the stopper surface 51… when the meshing reaction force applied from the worm wheel an18 to the worm shaft 17 is increased and the amount of bending of the leaf spring 42 is increased, the spring constant of the leaf spring 42 is changed to a large value stepwise.”) If applicant intends for certain positionings of elements to be other than the examiner’s best understanding of the claims (see 35 USC 112 rejections), then the examiner notes a lack of criticality in applicant’s application for any particular claimed location such that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify to relocate parts at least in accordance with the case law and policy set forth in MPEP 2144.04(VI).
Claim 2. The worm reducer according to claim 1, wherein the biasing plate spring, in a state of being arranged to extend in a third direction perpendicular to both the first direction and a second direction that is the axial direction of the worm accommodating portion, has one end portion (end of 42 supported on 49) in the third direction supported in a cantilever manner by the outer diameter side member, and has the load point at an other end portion (other end of 42) in the third direction.
Claim 3. The worm reducer according to claim 2, wherein the one end portion of the biasing plate spring is supported in a cantilever manner relative to the outer diameter side member using a pin (52) arranged to extend in the second direction.
Claim 4. The worm reducer according to claim 3, wherein the examiner takes Official Notice that aluminum alloys and iron alloys were extremely well known to be suitable materials for parts in the art such that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose an aluminum allow material for the outer diameter side member, and an iron allow for the pin. See MPEP 2144.07.
Claim 6. The worm reducer according to claim 2, wherein the outer diameter side member has a plurality of corner portions (corner portions supporting/contacting opposite ends of spring 42) spaced apart from each other in the third direction as portions that come into contact with the biasing plate spring during operation.
Claim 7. The worm reducer according to claim 6, wherein the biasing plate spring is configured to be capable of simultaneously coming in contact with two or more of the plurality of corner portions during operation (see figure 4B).
Claim 8. The worm reducer according to claim 2, wherein the outer diameter side member has a convex curved surface portion (curved surface portion of 52) that comes into contact with the biasing plate spring during operation.
Claim 9. The worm reducer according to any one of claims 1 to 8, comprising an elastic clamping means (any two of 57, 59, 58 in fig.9) for clamping the inner diameter side member from both sides in a third direction perpendicular to both the first direction and a second direction that is the axial direction of the worm accommodating portion; wherein the elastic clamping means has a pair of clamping plate springs (any two of 57, 59, 58 in fig.9) arranged on both sides in the third direction in a portion between the outer circumferential surface of the inner diameter side member and the inner circumferential surface of the outer diameter side member; and each clamping plate spring of the pair of clamping plate springs exhibits a non-linear spring characteristic in which a spring constant increases as an amount of deflection in the third direction increases.
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 recited in claim 5 (as best understood), does not provide any teaching, suggestion or motivation to modify toward the entirety of applicant's claim 5, 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.
The examiner notes the combination of references JP2018-204661 and JP2004-34857 in the PCT/ISA/237 for the parent PCT application (copy filed in this application by applicant on 1/27/2025). However, applicant’s claims and the JP661’ reference are drawn to a worm spring for a steering mechanism, whereas the JP857’ reference is drawn to a different field of a vehicle suspension spring for supporting a vehicle axle and does not solve the same problem as applicant’s claims. Accordingly, the JP857’ reference is not analogous and cannot render the claims obvious in accordance with U.S. practice. See MPEP 2141.01(a).
Conclusion
The prior art made of record on the attached PTO-892 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 See MPEP 2173.06 which states that a prior art rejection should not include considerable speculation about the meaning of terms employed in a claim or assumptions as to the scope of the claim citing In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962) and In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970).
2 See 37 C.F.R. 1.104(c)(2) which states "In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified" (emphasis added). See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) which states “There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement… Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence. Chester, 906 F.2d at 1578 (internal citation omitted). As discussed above, all that is required of the office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon…”
3 In accordance with MPEP §2112.01(I) and MPEP §2114, where the prior art structure is substantially identical to the claimed structure, the PTO must presume claimed functions/properties to be inherently capable thereto, thus presenting a prima facie case and properly shifting the burden to applicant to obtain/test the prior art and provide evidence to the contrary.
