DETAILED ACTION
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.
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 12, 13 and 15 are 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.
The limitation “a deformation slide that cooperates with said deformation strip, is directly connected to the spindle nut” in claim 12, lines 10-11 was not described in the specification. The specification does not even use the term “directly”.
The limitations of claim 15 were not described in the specification. The specification does not even use the terms “exactly” or “slot”.
Claims 1-9 and 11-15 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 1 recites the limitation "the side faces extending in the longitudinal direction" in lines 18-19. There is insufficient antecedent basis for this limitation in the claim. Although “mutually opposite side faces” are previously recited in lines 12-13, they are not described as necessarily “extending in the longitudinal direction”. Thus, it is unclear based on the claim language whether "the side faces extending in the longitudinal direction" recited in lines 18-19 are the same as or different from the previously recited “mutually opposite side faces”. Any clarifying amendments should take into account the other recitations of “side faces” (e.g., in claim 1, line 20; in claim 2, line 2; in claim 3, lines 2-3).
Claim 12 recites the limitation "the side faces extending in the longitudinal direction" in lines 18-19. There is insufficient antecedent basis for this limitation in the claim. Although “mutually opposite side faces” are previously recited in lines 12-13, they are not described as necessarily “extending in the longitudinal direction”. Thus, it is unclear based on the claim language whether "the side faces extending in the longitudinal direction" recited in lines 18-19 are the same as or different from the previously recited “mutually opposite side faces”. Any clarifying amendments should take into account the other recitations of “side faces” (e.g., in claim 12, line 20).
The limitation “a deformation slide that cooperates with said deformation strip, is directly connected to the spindle nut” in claim 12, lines 10-11 does not accurately describe the invention. As shown in Fig. 2, the deformation slide 7 is not directly connected to the spindle nut 55, there being intervening structure(s) between the deformation slide 7 and the spindle nut 55.
Claim 14 recites the limitation "the side faces extending in the longitudinal direction" in lines 19-20. There is insufficient antecedent basis for this limitation in the claim. Although “mutually opposite side faces” are previously recited in line 13, they are not described as necessarily “extending in the longitudinal direction”. Thus, it is unclear based on the claim language whether "the side faces extending in the longitudinal direction" recited in lines 19-20 are the same as or different from the previously recited “mutually opposite side faces”. Any clarifying amendments should take into account the other recitations of “side faces” (e.g., in claim 14, line 21).
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 1-7, 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 112429072 A) in view of Koenig et al. (DE 4138239 A1) and Raich (WO 2022/069531 A1). US 2023/0365183 A1 is used herein as an English equivalent / translation of WO 2022/069531 A1, and references to particular portions of Raich are in reference to US 2023/0365183 A1. Zhang teaches a steering column for a motor vehicle, comprising: an actuator 2 in which a steering spindle 1 is mounted so as to be rotatable about a longitudinal axis extending in a longitudinal direction; a casing unit 11 in which the actuator is held so as to be displaceable in the longitudinal direction; and an energy absorption device incorporated between the casing unit and the actuator, including: a deformation strip 5 that is elongate in the longitudinal direction and is fastened (via pins 3, 4 and 9) to the actuator or the casing unit; and a deformation slide 8 that cooperates with said deformation strip, is attached to the casing unit or the actuator, engages around the deformation strip, and has in each case a pair of retaining knobs 8-2 and deformation knobs 8-3 that protrude towards mutually opposite side faces of the deformation strip; wherein the retaining knobs are held in the longitudinal direction against retaining protrusions (to the right of the retaining knobs 8-2, as shown in Fig. 7) of the deformation strip; wherein the deformation knobs are arranged at a distance from the retaining knobs in the longitudinal direction and are at a transverse distance from one another which is less than a width (at section 5-3) of the deformation strip between the side faces extending in the longitudinal direction. The actuator has a casing tube (at 2) which is arranged telescopically in the casing unit. A motor-operated adjustment drive 10 is arranged between the casing unit and the actuator. Zhang does not teach that breakaway protrusions that protrude from the side faces are formed in the longitudinal direction in front of the deformation knobs. Koenig teaches breakaway protrusions (at 11 and 11’ in Figs 2 and 3). The breakaway protrusions are arranged in a starting portion of side faces of a deformation strip 6. A length of the breakaway protrusions is less than a length of the side faces (Fig. 2). A deformation portion (e.g., at the right of the leftmost breakaway protrusions, as shown in Fig. 2) adjoins the breakaway protrusions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form breakaway protrusions as taught by Koenig in the longitudinal direction in front of the deformation knobs of an invention as taught by Zhang in order to “cause an increasing and/or decreasing and/or a partially equal resistance force in the adjustment path once or several times” (paragraph 0011). Such a combination of Zhang and Koenig would naturally result in an invention wherein a distance between the retaining protrusions and the breakaway protrusions is greater than the distance between the retaining knobs and the deformation knobs, since for such a combination the breakaway protrusions would be positioned farther from the retaining protrusions than the deformation knobs. Furthermore, the relative dimensions recited in claim 5 do not patentably distinguish the claimed invention from the cited prior art since it has been held that where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device. MPEP §2144.04(IV)(A). In a similar vein, a retaining force generated between the retaining knobs and the retaining protrusions and a breakaway force generated between the deformation knobs and the breakaway protrusions would simply depend on the relative dimensions of the invention, and therefore the limitations of claim 6 do not patentably distinguish the claimed invention from the cited prior art since it has been held that where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device. MPEP §2144.04(IV)(A). The steering column in Zhang further comprises an assembly portion (at 5-4). The limitation “the assembly portion having a width which is less than the transverse distance between the deformation knobs” does not patentably distinguish the claimed invention from the cited prior art since it has been held that where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device. MPEP §2144.04(IV)(A). In Zhang, the steering column is adjustable via a motor (paragraphs n0008 and n0022). Zhang does not explicitly teach that the steering column is “electrically-adjustable”. Raich teaches a steering column that is electrically-adjustable (paragraphs 0031 and 0047) via an “electric motor 43” (paragraph 0047). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an electric motor as taught by Raich in the “adjusting motor assembly 10” (paragraph n0022) of Zhang in order to power the adjusting motor assembly via a vehicle’s electrical system. All the claimed elements were known in the cited prior art, and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results. MPEP §2143(I)(A).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN 112429072 A) in view of Koenig et al. (DE 4138239 A1) as applied to claim 1 above, and further in view of Pichonnat et al. (US 2020/0398885 A1). Zhang further teaches, “The steering outer tube 11 is mounted on the vehicle cross beam” (paragraph n0020). Zhang does not explicitly teach a carrier unit. Pichonnat teaches a casing unit 14 held in a carrier unit 22 so as to be adjustable in a vertical direction, wherein the carrier unit has a tensioning device (said tensioning device including an actuating lever 44) which is able to be put into a fixing position or a release position, wherein an actuator 12 is secured relative to the carrier unit in the fixing position and is adjustable relative to the carrier unit in the release position (paragraphs 0025-0026). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a carrier unit and a tensioning device as taught by Pichonnat for an invention as taught by Zhang “to selectively enable the first end 20 of the steering shaft 18 to be repositioned” (paragraph 0023) “so as to move the first end 20 of the steering shaft 18 vertically along the path 26” (paragraph 0026). All the claimed elements were known in the cited prior art, and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results. MPEP §2143(I)(A).
Claims 1-9 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Raich (WO 2022/069531 A1) in view of Zhang et al. (CN 112429072 A) and Koenig et al. (DE 4138239 A1). US 2023/0365183 A1 is used herein as an English equivalent / translation of WO 2022/069531 A1, and references to particular portions of Raich are in reference to US 2023/0365183 A1. Raich teaches an electrically-adjustable (paragraphs 0031 and 0047) steering column 1 for a motor vehicle, comprising: an actuator 3 in which a steering spindle 30 is mounted so as to be rotatable about a longitudinal axis L extending in a longitudinal direction; a casing unit 33 in which the actuator is held so as to be displaceable in the longitudinal direction; and an energy absorption device 6 incorporated between the casing unit and the actuator, including: a deformation strip 61 that is elongate in the longitudinal direction and is fastened (at first and second fastening portions 63 and 64 ) to the actuator or the casing unit; and a deformation slide 67 that cooperates with said deformation strip, is attached to the casing unit or the actuator, engages around the deformation strip, and has in each case a pair of deformation knobs 68 that protrude towards mutually opposite side faces of the deformation strip. The casing unit is held in a carrier unit 2 so as to be adjustable in a vertical direction. The actuator has an inner casing tube 31 which is arranged telescopically in the casing unit, and the steering spindle is mounted in the inner casing tube so as to be rotatable about the longitudinal axis. A motor-operated adjustment drive 5 is arranged between the casing unit and the actuator, wherein the motor operated adjustment drive includes a spindle nut 55 on a threaded spindle 54. The deformation slide is connected to the spindle nut (Figs. 3, 5, 6 and 7). The spindle nut is attached to the actuator and the threaded spindle is attached to the casing unit (Figs. 2, 3, 6 and 7). The deformation strip is fastened to the inner casing tube via first and second fastening portions (63 and 64). The deformation slide cooperates with said deformation strip at a location between the first and second fastening portions (Figs. 3, 5, 6 and 7). The deformation strip includes, at exactly one of the first and second fastening portions, an elongate slot 65, wherein the deformation strip is fastened to the inner casing tube via the elongate slot (Figs. 2-4, 6, 7 and 9). Raich appears to show retaining knobs (the two inwardly projecting protrusions of the deformations slide 67 other than the two inwardly projecting protrusions to which the leader lines from reference character 68 extend in Fig. 5). It is hard to tell from the drawings if the retaining knobs are held in the longitudinal direction against retaining protrusions of the deformation strip. Zhang teaches a steering column for a motor vehicle, comprising: an actuator 2 in which a steering spindle 1 is mounted so as to be rotatable about a longitudinal axis extending in a longitudinal direction; a casing unit 11 in which the actuator is held so as to be displaceable in the longitudinal direction; and an energy absorption device incorporated between the casing unit and the actuator, including: a deformation strip 5 that is elongate in the longitudinal direction and is fastened (via pins 3, 4 and 9) to the actuator or the casing unit; and a deformation slide 8 that cooperates with said deformation strip, is attached to the casing unit or the actuator, engages around the deformation strip, and has in each case a pair of retaining knobs 8-2 and deformation knobs 8-3 that protrude towards mutually opposite side faces of the deformation strip; wherein the retaining knobs are held in the longitudinal direction against retaining protrusions (to the right of the retaining knobs 8-2, as shown in Fig. 7) of the deformation strip; wherein the deformation knobs are arranged at a distance from the retaining knobs in the longitudinal direction and are at a transverse distance from one another which is less than a width (at section 5-3) of the deformation strip between the side faces extending in the longitudinal direction. The actuator has a casing tube (at 2) which is arranged telescopically in the casing unit. A motor-operated adjustment drive 10 is arranged between the casing unit and the actuator. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide an invention as taught by Raich with retaining protrusions, as explicitly taught by Zhang, in order to help hold the deformation strip in place within the deformation slide and in order to provide an additional means of absorbing energy besides the energy absorption that is due to the movement of the deformation strip with respect to the deformation knobs (paragraphs n0023 and n0024). The steering column in Zhang further comprises an assembly portion (at 5-4). The limitation “the assembly portion having a width which is less than the transverse distance between the deformation knobs” does not patentably distinguish the claimed invention from the cited prior art since it has been held that where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device. MPEP §2144.04(IV)(A). Neither Raich nor Zhang teaches that breakaway protrusions that protrude from the side faces are formed in the longitudinal direction in front of the deformation knobs. Koenig teaches breakaway protrusions (at 11 and 11’ in Figs 2 and 3). The breakaway protrusions are arranged in a starting portion of side faces of a deformation strip 6. A length of the breakaway protrusions is less than a length of the side faces (Fig. 2). A deformation portion (e.g., at the right of the leftmost breakaway protrusions, as shown in Fig. 2) adjoins the breakaway protrusions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form breakaway protrusions as taught by Koenig in the longitudinal direction in front of the deformation knobs of an invention as taught by Raich in order to “cause an increasing and/or decreasing and/or a partially equal resistance force in the adjustment path once or several times” (paragraph 0011). Such a combination of Raich, Zhang and Koenig would naturally result in an invention wherein a distance between the retaining protrusions and the breakaway protrusions is greater than the distance between the retaining knobs and the deformation knobs, since for such a combination the breakaway protrusions would be positioned farther from the retaining protrusions than the deformation knobs. Furthermore, the relative dimensions recited in claim 5 do not patentably distinguish the claimed invention from the cited prior art since it has been held that where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device. MPEP §2144.04(IV)(A). In a similar vein, a retaining force generated between the retaining knobs and the retaining protrusions and a breakaway force generated between the deformation knobs and the breakaway protrusions would simply depend on the relative dimensions of the invention, and therefore the limitations of claim 6 do not patentably distinguish the claimed invention from the cited prior art since it has been held that where the only difference between the prior art and the claims is 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 is not patentably distinct from the prior art device. MPEP §2144.04(IV)(A). All the claimed elements were known in the cited prior art, and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded predictable results. MPEP §2143(I)(A).
Response to Arguments
Applicant's arguments filed on December 8, 2025 have been fully considered but they are not persuasive.
Koenig is not relied upon for the positional relationship(s) between the energy absorption device, the casing unit and/or the actuator. The limitations involving the positional relationship(s) between the energy absorption device, the casing unit and/or the actuator are met by Zhang. Koenig is only relied upon for the use of breakaway protrusions on a deformation strip. The addition of breakaway protrusions to a deformation strip as taught by Zhang would result in a system that is only slightly different than the Zhang system and that is essentially the same as the claimed system, apart from the new limitation that the steering column is “electrically-adjustable”, which is obvious in view of Raich, as explained above. Koenig explicitly provides “Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention” (MPEP §2143(I)(G)) to support the finding of obviousness (i.e., in order to “cause an increasing and/or decreasing and/or a partially equal resistance force in the adjustment path once or several times” (paragraph 0011)). The conclusion of obviousness of such a combination is also supported by the rationales provided in MPEP §2143(A, C, D and F).
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.
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/KEITH J FRISBY/ Primary Examiner, Art Unit 3614