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
Claims 17-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/21/2025. Applicant has also cancelled the non-elected claims.
Drawings
Figure 7A should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g).
Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. 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 Objections
Claim 26 is objected to because of the following informalities:
Claim 26 should include “wherein”, for example, following “claim 11,“.
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.
Claim 34 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 34 recites “wherein at least one of the main oil supply channel and the brake oil supply channel extends greater than 400 millimeters along the core body”. However, this particular length is only ever mentioned in [0033] of the instant disclosure in the context of prior art gun-drilled bores. Given that claim 34 is not original to the disclosure, there is no explicit, implicit, or inherent support for implementing the same length in the machined channels per the instant invention.
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 23-25 and 36 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 23 recites “a first VVL and CDA supply channel” and “a second VVL and CDA supply channel”. It is understood from claim 11 that the VVL and CDA supply channels are different types of channels, while the language of claim 23 makes it seem as though the “first VVL and CDA supply channel” is a single channel having shared functionality. The same applies to the “second VVL and CDA supply channel.” For examination purposes, these limitations will be interpreted as referring to separate first VVL and CDA supply channels, respectively, and separate second VVL and CDA supply channels, respectively.
Claim 24 is rejected by virtue of its dependency on claim 23.
The term “smooth” in claim 25 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim 36 recites the limitation "the rocker arm assembly" in line 2. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, this will be interpreted as --the rocker shaft assembly--.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 31 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 31 recites “wherein press-fitting the sleeve around the core shaft comprises pressing the core shaft into the sleeve”, whereas claim 11 establishes “press-fitting the sleeve around the core shaft”. The examiner submits that the Newton’s Third Law requires that the action-reaction relationship of press-fitting the sleeve around the core shaft per claim 11 would inherently involve pressing the core shaft into the sleeve (as much as conversely pressing the sleeve over the core) such that claim 31 does not substantially limit the claim from which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 11-13, 20-32, and 34-26 are rejected under 35 U.S.C. 103 as being unpatentable over Custer et al. (U.S. PGPub 2006/0054405) in view of Quaas (DE102005017561, with reference to translation).
Claim 11: Custer et al. discloses a method of making a rocker shaft assembly (100 - paragraph 26) configured to support a rocker arm (300, Id.) and deliver oil (the hydraulic fluid may be oil - paragraph 36) to the rocker arm, the method comprising (see especially embodiment of Figs. 5-6, paragraph 37): providing a core shaft (100) having a core body (generally the body of 100); providing a sleeve (150); milling a main oil supply channel (one of grooves 140) onto the core body; milling a brake oil supply channel (another one of grooves 140) onto the core body; milling one of a variable valve lift (VVL) and cylinder deactivation (CDA) supply channel onto the core body (yet another one of grooves 140); and fitting the sleeve around the core shaft (as shown).
It is further noted that the designations of the channels as “main oil supply”, “brake oil supply”, “variable valve lift (VVL)”, and/or “cylinder deactivation (CDA)” are in name only, refer to the intended use of those passages, and do not necessarily limit the structures of the passages. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Custer does not specify press-fitting the sleeve around the core shaft. However, Quaas teaches a similar assembly method wherein the sleeve is press-fit around the core shaft (e.g. paragraphs 30, 40). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have press fit the sleeve around the core shaft in order to have achieved an adequate seal therebetween (Id.).
Claim 12: Custer further discloses passages (160) in the sleeve, but does not specify cross-drilling the sleeve to define them. However, Quaas further teaches drilling similar passages (9 - paragraph 62). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have cross-drilled the passages 160 since drilling is a common and available means for forming holes.
Claim 13: Referring to Custer, press-fitting (as taught by Quaas) the sleeve (150) around the core shaft (100) further comprises: aligning the passages (160) on the sleeve for fluid communication with the main oil supply channel, the brake oil supply channel and the one of the VVL and CDA supply channel on the core body (passages 160 are aligned with respective channels 140).
Claim 20: The one of the VVL and CDA supply channel (one of 140) is milled around an outer diameter of the core body in the form of a groove (channels 140 are grooves, and are located around the outer diameter, and each also has some degree of extent about the circumference of the shaft based on its width).
It is also noted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have milled the channels around an outer diameter of the core body since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Please note that in the instant application, paragraphs 35 and 38, Applicant has not disclosed any criticality for the arrangement or orientation of the channels.
Claim 21: One or both of the main oil supply channel and the brake oil supply channel (one(s) of 140) is milled around an outer diameter of the core body in the form of a groove (channels 140 are grooves, and are located around the outer diameter, and each also has some degree of extent about the circumference of the shaft based on its width).
It is also noted that it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have milled the channels around an outer diameter of the core body since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950). Please note that in the instant application, paragraphs 35 and 38, Applicant has not disclosed any criticality for the arrangement or orientation of the channels.
Claim 22: Custer does not explicitly disclose milling at least two variable lift (VVL) and cylinder deactivation (CDA) supply channels onto the core body, but does disclose “one or more grooves 140” (paragraph 37). Custer also discloses an embodiment with at least six grooves (e.g. Fig. 4G). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided two of each of the channels since it has been held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). Please note that in the instant application, Applicant has not disclosed any criticality for the number of grooves. One of ordinary skill would have simply provided as many grooves as needed for the application.
Claim 23: Custer does not disclose wherein a first VVL and CDA supply channel is spaced apart from a second VVL and CDA supply channel in a longitudinal direction along the core body. However. Quaas teaches dividing channels into separate channels along a longitudinal direction (e.g. using dividers 10 - Figs. 2-3, 5, 7; paragraphs 28-29, 42). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a first VVL and CDA supply channel spaced apart from a second VVL and CDA supply channel in a longitudinal direction along the core body in order to have configured the fluid paths differently as needed.
Furthermore, it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), and that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) Please note that in the instant application, paragraphs 35 and 38, Applicant has not disclosed any criticality for the arrangement or orientation of the channels, and has also generally provided no criticality for the number of grooves.
Claim 24: A similar argument as above may be made with respect to a third VVL and CDA supply channel spaced apart from the first and second VVL and CDA supply channels in the longitudinal direction along the core body, i.e. it constitutes an obvious duplication and/or rearrangement of grooves to meet a desired fluid passage arrangement.
Claim 25: Custer and Quaas do not teach that the one of the VVL and CDA supply channel comprises at least one longitudinal portion and at least one circumferential portion in fluid communication with the longitudinal portion about the core body, wherein a smooth bend or transition is formed between the at least one longitudinal portion and the at least one circumferential portion. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have shaped the channels in this way since it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, Applicant has not disclosed any criticality for the specific geometry of the channels. The examiner submits that machining grooves is a basic and well-established technology, and one of ordinary skill could have easily machined grooves about the core in any shape desired to direct fluid as needed.
Claim 26: Referring to Custer, the one of the VVL and CDA supply channel (one of 140) is curved or bent in a circumferential direction (e.g. the base of the channels have a semi-circular curve along a circumferential direction thereof in Fig. 5).
Alternatively, it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, Applicant has not disclosed any criticality for the specific geometry of the channels.
Claim 27: One or both of the main oil supply channel and the brake oil supply channel (one(s) of 140) is curved or bent in a circumferential direction (e.g. the base of the channels have a semi-circular curve along a circumferential direction thereof in Fig. 5).
Alternatively, it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, Applicant has not disclosed any criticality for the specific geometry of the channels.
Claim 28: At least one of milling the main oil supply channel onto the core body and milling the brake oil supply channel onto the core body comprises longitudinal milling (e.g. milling along the longitudinal direction of the core shaft 100, see Fig. 6).
Claim 29: The brake oil supply channel does not necessarily comprise at least one longitudinal portion and at least one circumferential portion in fluid communication with the longitudinal portion about the core body. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have shaped the channels in this way since it has been held that the configuration of a claimed product is a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed product is significant. In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). Please note that in the instant application, Applicant has not disclosed any criticality for the specific geometry of the channels. The examiner submits that machining grooves is a basic and well-established technology, and one of ordinary skill could have easily machined grooves about the core in any shape desired to direct fluid as needed.
Claim 30: In the embodiment of Figs. 5-6, at least a portion of the brake oil supply channel (one of the channels 140) is not necessarily diametrically opposed to (i.e. 180 degrees around the shaft from) at least a portion of the one of the VVL and CDA supply channel (another one of the channels 140). However, other embodiments show even numbers of channels which are diametrically opposed (Figs. 4C-4D, 4G). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have diametrically opposed the grooves since it has been held that rearranging parts of an invention involves only routine skill in the art. In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950), and that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) Please note that in the instant application, paragraphs 35 and 38, Applicant has not disclosed any criticality for the arrangement or orientation of the channels.
Claim 31: Press-fitting the sleeve around the core shaft comprises pressing the core shaft into the sleeve (as noted above, action-reaction would dictate that this would occur).
Claim 32: Custer is silent as to the materials of the core shaft and sleeve. However, Quaas further teaches that the core shaft and the sleeve are both formed of metal (e.g. paragraphs 33-34). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used metals since they are relatively hard and durable compared to other materials, and are commonly used in automotive parts. Additionally, 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, 277 F.2d 197, 125 USPQ 416 (CCPA 1960). Please note that in the instant application, e.g. paragraphs 8, 34, and 37, Applicant has not disclosed any criticality for the use of metals.
Claim 34: Custer and Quaas do not teach that at least one of the main oil supply channel and the brake oil supply channel extends greater than 400 millimeters along the core body. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have made at least one of the main oil supply channel and the brake oil supply channel extend greater than 400 millimeters since it has been held that where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984). Please note that in the instant application, Applicant has not disclosed any criticality for the length of the channels. Presumably the length of the channels would simply be proportional to the length of the rocker shaft assembly, which would in turn be scaled according to the vehicle/engine it was intended for.
Claim 35: Custer does not provide at least one divider into the rocker shaft assembly to prevent oil leakage at a plug or a dowel. However, Quaas further teaches providing at least one divider (10) into the rocker shaft assembly. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided at least one divider in order to have directed fluid flow as desired in the rocker shaft. Regarding “to prevent oil leakage at a plug or a dowel”, the claim as written does not appear to positively recite the plug or dowel, and the use of the divider “to prevent oil leakage at a plug or a dowel” refers to the intended use of the divider. The divider may be capable of this purpose if it blocked fluid from leaking from such a plug or dowel.
Claim 36: Custer further discloses delivering oil to the rocker arm assembly during a variable valve actuation event (paragraph 36).
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Custer et al. and Quaas as applied to claim 1 above, and further in view of Curten et al. (U.S. Patent 5,881,946).
Custer and Quaas teach a method substantially as claimed except for heat treating or coating the sleeve. However, Curten teaches heat treating a sleeve for a rocker arm (column 3, lines 42-45). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have heat treated the sleeve in order to have ensured the proper hardness thereof.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The additional references provide further examples of rocker arm assemblies formed by inserting a channeled insert into a sleeve.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW P TRAVERS whose telephone number is (571)272-3218. The examiner can normally be reached 10:00AM-6:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sunil K. Singh can be reached at 571-272-3460. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Matthew P Travers/Primary Examiner, Art Unit 3726
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