DETAILED ACTION
The following is a first action on the merits of application serial no. 19/020537 filed 1/14/2025.
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 species 2, Figures 6A and 6B in the reply filed on 2/6/26 is acknowledged. The traversal is on the ground(s) that “It is respectfully submitted that the subject matter of all species is sufficiently related that a search for one species would encompass subject matter of the remaining species. As a result, there would be no significant burden on the Examiner to search and examine all species. As explained in MPEP §803, "If the search and examination of all the claims in an application can be made without serious burden, the examiner must examine them on the merits, even though they include claims to independent or distinct inventions.". This is not found persuasive because the species are independent and recite mutually exclusive characteristics of different planetary component connections to different shafts with addition of one or two (electric) generators with different connections to planetary and shafts, etc.. In addition, these species are not obvious variants of each other based on the current record. Further, the species require a different field of search employing different search strategies or search queries, i.e., Figure 7A, 8A embodiments require planetary gearing connections with one or two (electric) generators which isn't required for the Figure 4 and 6A embodiments explicitly. Further, the Figure 6A embodiment requires additional planetary gearing (third planetary) connection that isn't required by the other embodiments explicitly. Also the examiner search field for just planetary gearing for embodiments covered by Figures 4 and 6A would be different from search field for planetary gearing with (electric) generator embodiments covered by Figures 7A and 8A.
The requirement is still deemed proper and is therefore made FINAL.
Claims 26-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected species, there being no allowable generic or linking claim. Note: examiner has further withdrawn claims 27-32 due to applicant’s elected species of Figures 6A and 6B not supporting those claims as recited. For example, claim 27 recites the limitation “a second planetary gear comprising sun gear coupled to the second rotational output and a ring gear coupled to the third rotational output;” in lines 8-9, however, Figure 6B shows and paragraph [0053] in specification describes that the second carrier (640) of the second planetary gear is coupled to the third output (614) and not the second ring gear as recited in claim 27. Further, another example, claim 31 recites the limitation “wherein the second planetary gear comprises a carrier and the third planetary gear comprises a sun gear, and wherein the carrier of the second planetary gear is coupled to the sun gear of the third planetary gear.”, however, Figure 6B shows and paragraph [0051] in specification describes that the intermediate member (608) couples the third sun gear (628) to the first carrier (630) and not the second carrier as recited in claim 31. Currently, claims 27-32 are not supported by the original disclosure (or in parent application as well) as filed in which there are no embodiments that seem to represent claims 27, 29, 31 and 32 in particular.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63/381411, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. At least the embodiments disclosed in Figures 6A, 6B, 7A, 7B, 8A and 8B aren’t disclosed in the provisional application as filed. Per MPEP 211.05, section I, section A: (although) a claim is not required in a provisional application. However, for a claim in a later filed nonprovisional application to be entitled to the benefit of the filing date of the provisional application, the written description and drawing(s) (if any) of the provisional application must adequately support and enable the subject matter of the claim in the later filed nonprovisional application. If a claim in the nonprovisional application is not adequately supported by the written description and drawing(s) (if any) of the provisional application, that claim in the nonprovisional application is not entitled to the benefit of the filing date of the provisional application. Note: although “generic claims” 21-22 along with claims 23-25 are the only claims being examined at this time, the priority benefit is being addressed currently based on applicant’s species selection of Figures 6A and 6B.
Information Disclosure Statement
The information disclosure statement filed 4/10/25 has been considered.
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.
Claim(s) 21-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yates et al 5083989. As to claim 21, Yates discloses a gear drive (Figure 3) comprising: mounting brackets (via opposite sides of 8) configured to mount the gear drive to a component (electric motor) that is stationary relative to the gear drive; a first planetary gear (can be either 10 or 12); a second planetary gear (10 or 12) coupled to the first planetary gear; and a housing (42, 44, 46) forming an outer case configured to house the first planetary gear and the second planetary gear, the housing being rotatable relative to the mounting brackets (via output from 20 or 22; column 4, lines 4-16), and the housing being coupled to one of the first planetary gear (22 via 42 or 20 via 46) or the second planetary gear (22 via 42 or 20 via 46).
As to claim 22, wherein the housing comprises a surface (axial extension of 42 indirectly interfacing with electric motor via 8) configured to interface with a brake or generator (electric motors are well known in the art to generate electrical energy for operational output) to control a rotation of the housing relative to the mounting brackets.
As to claim 23, further comprising: a first carrier (22 or 24) of the first planetary gear coupled to a second ring gear (18 or 20) of the second planetary gear; and a first ring gear (18 or 20) of the first planetary gear coupled to a second carrier (22 or 24) of the second planetary gear, the first ring gear coupled to the housing (18 is indirectly coupled to housing via engagement with 26 to 22 to 42 or 20 is directly coupled to housing via 46).
As to claim 24, further comprising: a first sun gear (14 or 16) of the first planetary gear coupled to a first output shaft (4 or 6; these shafts can be considered output due to receiving output motion from electric motor; column 3, lines 54-58); and a second sun gear (14 or 16) of the second planetary gear coupled to a second output shaft (4 or 6).
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.
Claim(s) 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yates in view of Guerdan et al 2462182 and Yates et al 5087230. Yates ‘989 shows that it is well known in the art to provide a first and second output shaft (via 32, 34) having opposite rotational directions; however, Yates doesn’t explicitly disclose that the first and second outputs coupled to the sun gears (14, 16) rotate in opposite directions.
Yates ‘230 discloses a gear drive and shows that it is well known in the art to provide opposite rotational output to first and second shafts (2 and 4) from an electric motor.
Guerdan discloses a contra-rotating electric motor and shows that it is well known in the art to provide opposite rotational output to first and second shafts (15 and 16) from an electric motor.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to provide the sun gear output shafts in Yates ‘989 with opposite rotational directions in view of Yates ‘230 and Guerdan from the electric motor to increase operating efficiency of gear drive by having electric motor initially output the counter rotation per shaft to ensure equal torque output loading through the gear drive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
-Kobayashi 5951430, Figure 2; Pecnik et al 7083541, Figure 2 and Kochan 20200309239, Figures 5, 7 and 8 all show that it is well known in the art to provide a gear drive having a housing rotatable relative to mounting brackets supporting a stationary device and having a first and second planetary gear coupled to housing, all meet the limitations as recited in claim 21.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TISHA D LEWIS whose telephone number is (571)272-7093. The examiner can normally be reached Mon-Fri: 8:30am to 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anna M Momper can be reached at 571-270-5788. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Tdl
/TISHA D LEWIS/Primary Examiner, Art Unit 3619 April 2, 2026