DETAILED CORRESPONDENCE
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 Final Office Action is in response to the amendment filed on May 5th, 2026 for application no. 19/039,094 filed on January 28th, 2025. Claims 1, 4-13, 15-16 and 18-20 are pending. In the present amendment, claims 1, 4, 11, 16 and 18 are amended, and claims 2-3, 14 and 17 are canceled.
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.
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.
Claim 4 is 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 pre-AIA the applicant regards as the invention.
Regarding Claim 4 (lines 1-2), in the recitation of “wherein the mount tang includes a first portion extending through the at least one mount aperture in the direction” the difference between the portion of the mount tang now recited in claim 1 (last clause) and the “first portion” recited in claim 4 is unclear. The lack of clarity renders the claim indefinite. Applicant could recite “wherein the mount tang includes [[a]] the first portion extending through the at least one mount aperture in the radial direction” to clarify the recitation and Examiner will interpret the recitation as such during examination. See MPEP 2173.05(o) – Double Inclusion.
Regarding Claim 4 (lines 1-2), in the recitation of “wherein the mount tang includes a first portion extending through the at least one mount aperture in the direction” the difference between the “radial direction” now recited in claim 1 (last clause) and the “direction” recited in claim 4 is unclear. The lack of clarity renders the claim indefinite. Applicant could recite “wherein the mount tang includes [[a]] the first portion extending through the at least one mount aperture in the radial direction” to clarify the recitation and Examiner will interpret the recitation as such during examination. See MPEP 2173.05(o) – Double Inclusion.
Claim Rejections - 35 USC § 103
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 16 and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Schonlau (DE 10 2015 006 323), in view of Herrmann (US 10,731,758). See translation provided to Applicant with the Office Action mailed March 13th, 2026.
Regarding Claim 16, Schonlau teaches a park system (Fig. 1, “parking lock” 1) configured to selectively brake an output shaft of a transmission (see Fig. 1), the park system (1) comprising:
an actuation linkage (“piston assembly” 17) having a piston (“actuating plunger” 24) axially translatable along a longitudinal axis (axis through 24) in response to one or more fluid pressures ([0036] – “The locking of the rest position of the piston assembly (17) takes effect when the force of the hydraulic pressure on the piston (18) exceeds the force of the spring (27)”),
a magnet assembly (“permanent magnet” 30, “sensor carrier” 29 and the hall sensor not shown in Fig. 1; [0045] – “The piston assembly (17) is rigidly connected to a sensor carrier (29) which carries a permanent magnet (30), the permanent magnet in conjunction with a Hall sensor enabling electrical monitoring of the position of the piston assembly”) affixed to the piston (24) for axial translation therewith that includes at least one magnet (30) and a housing (MH) having a mount plate (MMP), and
a position sensor (“Hall sensor” not shown in Fig. 1; see [0045]) to detect a position of the at least one magnet (30) that is spaced from the longitudinal axis (axis through 24; see Fig. 1), wherein:
the piston (24) includes a head (PH) and a projection (PP) that extends outwardly from the head (PH);
the projection (PP) defines a planar mounting surface (see Examiner Fig. 1); and
the mount plate (MMP) is arranged in direct contact with the planar mounting surface (planar mounting surface of PP).
PNG
media_image1.png
412
738
media_image1.png
Greyscale
Examiner Fig. 1 – Fig. 1 of Schonlau
Schonlau does not teach “a park system to selectively brake an output shaft of a transmission, the park system comprising: an electro-hydraulic valve assembly to deliver one or more fluid pressures, an actuation linkage having a piston axially translatable along a longitudinal axis in response to the one or more fluid pressures delivered thereto from the electro-hydraulic valve assembly”.
Herrmann teaches a park system (see Figs. 1-2) to selectively brake an output shaft of a transmission (col. 3, line 6 – “locking pawl includes a ratchet tooth which, in the engaged condition of the parking lock, engages into a tooth space of a locking toothing of a parking interlock gear acting on an output shaft of the automatic transmission to block the parking interlock gear and the output shaft against rotation”), the park system comprising:
an electro-hydraulic valve assembly (“hydraulically actuatable actuator” 100 and the valve body seen in Fig. 2) to deliver one or more fluid pressures (col. 6, line 5 – “parking lock also includes a hydraulically actuatable actuator 100, with the aid of which the shift position of the parking lock is predefined. As represented in FIG. 2, a piston 120 is arranged axially displaceably in a control housing 110 of the actuator 100, pressure is applied to the piston 120 in order to disengage the parking lock”), and
an actuation linkage (Figs. 2-3; at least 120, 150, 160 and 96) having a piston (120) axially translatable along a longitudinal axis (axis through 120) in response to the one or more fluid pressures delivered thereto from the electro-hydraulic valve assembly (see Fig. 2; see col. 6, line 5 passage above).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the park system taught by Schonlau with the output shaft and electro-hydraulic valve assembly taught by Herrmann, such that “a park system to selectively brake an output shaft of a transmission, the park system comprising: an electro-hydraulic valve assembly to deliver one or more fluid pressures…an actuation linkage having a piston axially translatable along a longitudinal axis in response to the one or more fluid pressures delivered thereto from the electro-hydraulic valve assembly”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in combining known elements, and have the obvious advantage of reliably engaging and disengaging the park system taught by Schonlau.
Regarding Claim 18, Schonlau and Herrmann teach the park system of claim 16,
Schonlau teaches wherein the housing (Examiner Fig. 1, MH) includes a U-shaped support bracket (see Examiner Fig. 1) interconnected with the mount plate (MMP).
Regarding Claim 19, Schonlau and Herrmann teach the park system of claim 18,
Schonlau teaches wherein the housing (Examiner Fig. 1, MH) includes a magnet enclosure (for receiving 30) interconnected with the support bracket and arranged opposite the mount plate (MMP).
Regarding Claim 20, Schonlau and Herrmann teach the park system of claim 19,
Schonlau teaches wherein the magnet enclosure (Fig. 1, portion of 29 that receives 30) carries the at least one magnet (30) such that the at least one magnet (30) is spaced from the longitudinal axis (axis through 24).
Response to Arguments
The Applicant's arguments filed May 5th, 2026 are in response to the Office Action mailed March 13th, 2026. The Applicant's arguments have been fully considered.
Response to Claim Rejections - 35 USC § 102 and/or 103
Regarding Claims 1 and 11, Applicant has recited features that distinguish from those taught by the prior art of record. See allowable subject matter set forth below.
Regarding Claim 16, Applicant’s argument that “With respect to former claim 17, the Office Action indicated "Schonlau teaches wherein the magnet assembly (Fig. 1, 30, 29 and the Hall sensor not shown in Fig. l; see [0045]) comprises a housing (29) that includes a mount plate (see Fig. 1) arranged in direct contact with a projection of the piston (24; see Fig. l)." Office Action, pg. 16. Thus, the Office Action interpreted the sensor carrier 29 as reading on the claimed housing having the claimed mount plate, and the plunger 24 as reading on the claimed piston having the claimed projection. As shown in Fig. 1, the enlarged end (i.e., the leftmost end) of the plunger 24 has a curved surface that interacts with the sensor carrier 29, which is distinguishable from the planar mounting surface of the claimed projection. Moreover, assuming arguendo that the sensor carrier 29 is arranged in direct contact with the enlarged end of the plunger 24, such contact is distinguishable from the direct contact between the mount plate and the planar mounting surface of the claimed projection” (p. 10-11) is not persuasive. Merriam-Webster’s Online Dictionary defines the recited term “planar” as “of, relating to, or lying in a plane”. The term “planar” can encompass other surfaces besides the Applicant’s implied requirement of a flat mounting surface. As seen in Examiner Fig. 1 above, all of the various surfaces seen in Examiner Fig. 1 can be defined with a plane including the curved piston projection (PP) identified by Examiner. Also, the sensor carrier (Fig. 1, 29) is clearly arranged in direct contact with the plunger (24) as evidenced by Fig. 1 of Schonlau. Therefore, Schonlau teaches the recitation of “wherein: the piston includes a head and a projection that extends outwardly from the head; the projection defines a planar mounting surface; and the mount plate is arranged in direct contact with the planar mounting surface”. See detailed and relevant rejections presented above.
Response to Double Patenting Rejections
Regarding Claims 1, 11 and 16, Applicant’s amendment overcomes the nonstatutory double patenting rejections mentioned in the previous Office Action mailed March 13th, 2026.
In conclusion, amended claims 1, 5-13 and 15 are allowed. See allowable subject matter set forth below. Amended claims 4, 16 and 18-20 are rejected. See detailed and relevant rejections set forth above.
Allowable Subject Matter
Claims ---1, 5-13 and 15 are allowed.
Claim 4 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office Action.
Reasons for allowance, if applicable, will be the subject of a separate communication to the Applicant or patent owner, pursuant to 37 CFR § 1.104 and MPEP § 1302.14.
As allowable subject matter has been indicated, Applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James J. Taylor II whose telephone number is (571)272-4074. The examiner can normally be reached M-F, 9:00 am - 5:00 pm EST.
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, 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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
JAMES J. TAYLOR II
Primary Examiner
Art Unit 3655
/JAMES J TAYLOR II/Primary Examiner, Art Unit 3655
Prosecution Insights