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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17, 19, 20 of U.S. Patent No. 12240318. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-19 are generic to all that is recited in claims 1-17, 19, 20 of the patent. That is the patented claims fall entirely within the scope of claims 1-19. More particularly, the following correspondence between the Application and the Patented claims exist. Claim 1 corresponds to claim 1 of the Patent. Claims 2-17 correspond to claims 2-17, respectively, in the Patent. Claim 18 corresponds to claim 19. Claim 19 corresponds to claim 20.
Claim Interpretation
For purpose of examination, a unit bearing is being interpreted as a cartridge bearing or wheel hub bearing which are typically included in wheel hub assemblies as is commonly known in the art. In other words, wheel hub assemblies, especially ones built in recent years can be synonymous with “unit bearings”.
Claim Rejections - 35 USC § 102
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) 1, 2, 4-8, 15, 16, 18, 19 is/are rejected under 35 U.S.C. 102 a1 as being anticipated by Hardy et al. (USpgpub 20060207384).
Independent claims-
Regarding claim 1, Hardy et al. discloses a portal assembly (fig.15, 21) comprising a portal assembly for a vehicle axle having a rotatable axle shaft, the portal assembly comprising:
a housing (21, 29) configured for attachment to the vehicle axle (28 and axle of vehicle);
a gear assembly (fig.15, 5, 23) disposed within the housing, the gear assembly comprising:
an input gear (5) linked to the axle shaft, the input gear configured to rotate around a first rotational axis in response to a rotational force from the axle shaft (readily apparent in fig.15);
an output gear (23) having a proximal side and a distal side (seen in fig.1, the proximal side is the side with support 17, 2), the proximal side disposed on a rotational support (fig.1, 2, 17 and support built into housing) disposed along a second rotational axis spaced at a distance lower than the first rotational axis (readily visible in fig.15), the output gear configured to convert rotation of the input gear to rotation of the output gear;
an output axle shaft (25) extending from the distal side of the output gear (seen in fig.1), the output axle shaft having a distal end configured to extend through an opening in the housing (seen in fig.15).
a unit bearing (wheel hub unit 32 reads on this and includes 31 and 34) comprising a fixed portion (32 is attached to housing at 29) attached to the housing and a rotating portion (34), the rotating portion configured to mate with the distal end of the output axle shaft so that the distal side of the output gear is fully supported by the unit bearing (evident from fig.1), wherein the unit bearing has fasteners extending therefrom for attachment to a wheel hub (bolts clearly seen in fig.1; it appears applicant calls a wheel hub the wheel 30 in their figures).
Regarding claim 15, Hardy et al. discloses a portal assembly, comprising:
a housing (fig.15, 21, 29) having a proximal side configured for attachment to a vehicle axle with a stub shaft (28) extending through a proximal opening (seen in fig.15) and a distal side having a distal opening (opposite side seen in fig.15);
a gear assembly (5, 23) disposed within the housing and configured to effect a gear reduction from the stub shaft on a first rotational axis to a second rotational axis (evident in fig.15), wherein the second rotational axis is disposed at a lift spacing below the first rotational axis (evident from fig.15), and wherein the gear assembly comprises an output gear (fig.1, 23) having a proximal side disposed on a rotational support (fig.1, 17, 2 and bearing support in housing 21) along the second rotational axis spaced at a distance lower than the first rotational axis (evident from figures), the output gear configured to convert rotation along the first rotational axis to rotation along the second rotational axis (evident from figures); and
a unit bearing (fig.1, 31, 32, 34 reads on a unit bearing) comprising a fixed portion (31) attached to the distal side of the housing (fixed on distal side via 29) and a rotating portion (34) configured to mate with a distal side of the output gear, at least a portion of the distal side extending through the distal opening (evident from figures), wherein a distal side of the output gear is fully supported by the unit bearing (seen in fig.1), wherein the unit bearing is configured for attachment to a wheel hub (it is configured in the same manner as applicant’s disclosed invention).
Dependent claims-
Regarding claim 2, Hardy discloses the portal assembly of claim 1, wherein the output gear is in direct contact with the input gear (seen in fig.15).
Regarding claim 4, Hardy discloses that the output gear is integrally formed with the output axle shaft (they would be attached to each other and thus integrally formed; note it has been held that the term integral does not limit itself to a one piece or monolithic structure and could comprise two structures that are joined; even so, the aspect of having an axle shaft made in one piece with an output gear is old and well known in the art and further has been held to be a matter of design choice).
Regarding claims 5, and 18, Hardy discloses wherein the output axle shaft has splines disposed at each of the distal end and the proximal end, wherein the proximal end engages with a corresponding spline in the output gear and the distal end engages with a corresponding spline in the unit bearing (figures in Hardy and paragraph 35 discuss a splined connection between the shaft and gear and also between the shaft and wheel hub or in other words unit bearing; in addition, it is old and well known / common knowledge in the art to make use of splined connections between gears and axles and axles and bearings).
Regarding claims 6, and 19, Hardy discloses wherein the vehicle axle comprises a steering axle (paragraph 27) and the housing comprises a knuckle portion (knuckle portions on 21; also see paragraph 27) configured for replacement of an existing knuckle portion on the axle (they are designed to replace existing knuckles as is typical with portal axle housings).
Regarding claim 7, Hardy fails to explicitly disclose or show wherein the input gear has a plurality of internal splines configured to receive corresponding external splines on the axle shaft (the examiner further takes official notice that the use of splined connections between shafts and gears is old and well known1).
Regarding claim 8, Hardy discloses wherein the axle shaft is linked to the upper gear of by means of a u-joint or constant velocity (CV) joint (28 is a u-joint; in addition, the use of a u joints and CV joints is old and well known in the art of portal axles).
Regarding claim 16, Hardy discloses wherein the gear assembly comprises an input gear (5) disposed along the first rotational axis.
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.
Claim(s) 3, 9-14, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hardy et al. (USpgpub 20060207384) in view of Armfield (USP 8844669).
Independent claim-
Regarding claim 9, Hardy et al. discloses a portal assembly, comprising:
a housing (fig.15, 21, 29) having a proximal side configured for attachment to a vehicle axle with a stub shaft (28) extending through a proximal opening (seen in fig.15), and a distal side having a distal opening (seen in fig.15);
a gear assembly disposed within the housing, the gear assembly comprising:
an input gear (5) linked to the stub shaft, the input gear configured to rotate around a first rotational axis in response to a rotational force from the stub shaft (evident in figures);
an output gear (23) having a proximal side disposed on a rotational support disposed along a second rotational axis spaced at a distance lower than the first rotational axis, the output gear configured to convert a rotational force of the input gear to rotation of the output gear (evident in figures);
an output gear bearing (2) coaxially disposed between a proximal side of the output gear and the rotational support (portion of housing supporting bearing), the output gear bearing configured to support the proximal side of the output gear (seen in fig.1);
an output axle shaft (25) having a proximal end configured to be received within a distal side of the output gear and a distal end configured to extend through the distal opening in the housing (seen in figures), the output axle shaft configured to be driven by the output gear; and
a unit bearing (fig.1, 31, 32, 34 reads on a unit bearing) comprising a fixed portion (31) and a rotating portion (34), the fixed portion having a mounting plate (portion of 31 that would fasten to 29) configured for attachment to the distal side of the housing, the rotating portion configured to mate with the distal end of the output axle shaft wherein the distal side of the output gear is fully supported by the unit bearing (evident in figures), wherein the unit bearing has fasteners extending therefrom for attachment to a wheel hub (has the same fastener setup as is typical and analogous to Applicant’s, seen in figures).
Hardy et al. fails to disclose a pair of idler gears configured to transfer the rotational force from the input gear to the output gear.
Armfield teaches within the same field of Portal axles, the concept of providing a portal axle which utilizes a pair of idler gears (57) configured to transfer the rotational force from the input gear to the output gear.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to have modified the portal axle disclosed in Hardy et al. to make use of a pair of idler gears as taught/suggested in Armfield in order to provide the same predictable result of transferring the rotational force of the input gear to the output gear just in a different ratio. It is old and well known within the field of portal axles to have any number of idler gears or none at all and there would be no difficulty to a PHOSITA in accomplishing this modification2.
Dependent claims-
Regarding claims 3 and 17, please see the rationale/rejection provided above for claim 9. Despite Hardy et al. not disclosing idler gears, their use is obvious as per the rejection presented for claim 9. For sake of brevity, the rejection will not be copied here.
Regarding claim 10, Hardy discloses that the output gear is integrally formed with the output axle shaft (they would be attached to each other and thus integrally formed; note it has been held that the term integral does not limit itself to a one piece or monolithic structure and could comprise two structures that are joined; even so, the aspect of having an axle shaft made in one piece with an output gear is old and well known in the art and further has been held to be a matter of design choice).
Regarding claim 11, Hardy discloses wherein the output axle shaft has splines disposed at each of the distal end and the proximal end, wherein the proximal end engages with a corresponding spline in the output gear and the distal end engages with a corresponding spline in the unit bearing (figures in Hardy and paragraph 35 discuss a splined connection between the shaft and gear and also between the shaft and wheel hub or in other words unit bearing; in addition, it is old and well known / common knowledge in the art to make use of splined connections between gears and axles and axles and bearings).
Regarding claim 12, Hardy discloses wherein the vehicle axle comprises a steering axle (paragraph 27) and the housing comprises a knuckle portion (knuckle portions on 21; also see paragraph 27) configured for replacement of an existing knuckle portion on the axle (they are designed to replace existing knuckles as is typical with portal axle housings).
Regarding claim 13, Hardy fails to explicitly disclose or show wherein the input gear has a plurality of internal splines configured to receive corresponding external splines on the axle shaft (the examiner further takes official notice that the use of splined connections between shafts and gears is old and well known3).
Regarding claim 14, Hardy discloses wherein the axle shaft is linked to the upper gear of by means of a u-joint or constant velocity (CV) joint (28 is a u-joint; in addition, the use of a u joints and CV joints is old and well known in the art of portal axles).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Many other prior art are relevant and many possible rejections exist similar to the ones done in the Parent case.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS C DIAZ whose telephone number is (571)270-5461. The examiner can normally be reached M-F 9am-6pm.
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, John Olszewski can be reached at 571-272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/THOMAS C DIAZ/ Primary Examiner, Art Unit 3617
1 USP 10889182- also showcases splined connections between gears/shafts in a portal housing
2 USP 11697340 showcases another example of idler gear usage and even an example without idler gears.
3 USP 10889182- also showcases splined connections between gears/shafts in a portal housing