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 is the final office action on the merits of Application No. 19/088,460 filed on 03/24/2025. Claims 1-3, and 5-12 are pending.
Priority
Application claims the benefit of German Application No. JP2024-049599 filed 03/26/2024. Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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.
Claims 1-3 and 5-12 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 recites the phrase “the sliding portion is divided into a main load portion and a sub load portion, the main load portion receiving a large load from the planetary gear member, the sub load portion receiving a smaller load than the main load portion, and the first region is the sub load portion”.
The specification describes the two load portions as references 31 or 34 and 32 or 33 as shown in fig. 5 and para 19 and illustrates numerous possible shapes of these two regions as shown in fig. 6. However, It is not clear structurally that these load portions are meant to perform the functionally of actually the receiving the different loads while the planetary gear rotates. There is no direction or guidance provided by the inventor as to how to make the two loads as these are recited. For example, if a planetary gear with an even outer surface as illustrated in the figures, is rotated, the load will apply equally to all the parts of that gear as those parts contact the adjacent gear. If the gear itself is structurally the same circumferentially, and the sub load instead refers to the shape of the contact area between gears (which will move on the gear as the gear rotates), this is not clearly recited in the claims.
For the examination purpose, the main load portion is considered as a non-indented portion and the sub load portion is considered as an indented portion.
Claims 2-3 and 5-12 are rejected as they depend on claim 1.
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.
Claims 1-3, and 5-12 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 pre-AIA the applicant regards as the invention.
Regarding claim 1, the claim phrase “the sliding portion is divided into a main load portion and a sub load portion, the main load portion receiving a large load from the planetary gear member, the sub load portion receiving a smaller load than the main load portion, and the first region 31 is the sub load portion” renders the claim indefinite. It is not clear structurally what these load portions are meant here to perform the functionally of the receiving the load, since the specification illustrates numerous possible shapes of these regions (e.g. see fig. 6). Does it refer to the contact area, which moves on the gear or a specific area on the gear that would always under all circumstances receives less load? Clarification is required.
For the examination purpose, the main load portion is considered as non-indented portion and the sub load portion is considered as an indented portion.
Claims 2-3 and 5-12 are rejected as they depend on claim 1.
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 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.
Claims 1-3, 5-7, and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Martin et al.(US 20230054545 A1)(hereinafter ”Martin”).
Regarding claim 1, Martin discloses a shaft member (24, figs. 1-12) that slides against an inner circumferential surface (has no character numeral, the inner circumferential surface of 132) of a planetary gear member (e.g. planet gear or star gear 132, fig. 12, para 67), the shaft member (24, fig. 12) comprising:
a main body portion (has no character numeral, pointed by 24 in fig. 12);
a sliding portion (e.g. bushing 136, fig. 12, para 68) that is provided on an outer circumferential side of the main body portion (e.g. 24) and has an outer circumferential surface that slides against the inner circumferential surface (e.g. , the inner circumferential surface of 132), the outer circumferential surface being divided into a first region (e.g. the outer surface that does not include any grooves as shown in fig. 8) and a second region (e.g. the outer surface that includes grooves as shown in fig. 8) other than the first region;
the first region and the second region being preset in a circumferential direction;
wherein when the sliding portion (e.g. 136, fig. 12) slides against the planetary gear member (132, fig. 12), the sliding portion (136, fig. 12) is divided into a main load portion (e.g. second region, see fig. A above, moan load is the outer surface that does not include the grooves and therefore, receives the majority of the force or load) and a sub load portion (e.g. first region, fig. A above, sub load portion are those areas in the grooves), the main load portion receiving a large load from the planetary gear member, the sub load portion receiving a smaller load than the main load portion, and the first region is the sub load portion.
an opening (66C, 70aB, 54A, 70B and/or 64B, fig. that is open in the first region on an outer circumferential side of the sliding portion;
a connecting passage portion (e.g. 46) that is provided inside the shaft member 24 and has one end connected to the opening (see fig. 2 or 3); and
a groove portion (e.g. 76, fig. 8, para 47) that is provided so as to be recessed radially inward from the outer circumferential surface, the groove portion connecting the opening and at least one end of the sliding portion in an axial direction (e.g. up-down direction or 36 in fig. 8), the groove portion (76 ,fig. 8) having a groove end (e.g. 86A or 86B) that is an end opposite to the opening, the groove end (86A or 86B) being open on an outer wall (e.g. 40/38, fig. 8) at an axial end of the sliding portion. (see para 57)
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Fig. A : Annotated fig. 8 of Martin
Regarding claim 2, Martin discloses the shaft member (24, figs. 1-12) according to claim 1, wherein the groove portion (76, fig. 8) connects the opening and both ends of the sliding portion (136, fig. 12) in an axial direction.
Regarding claim 3, Martin discloses the shaft member (24, figs. 1-12) according to claim 1, wherein the groove portion is provided in the first region. (see the annotated fig. A above)
Regarding claim 5, Martin discloses the shaft member (24, figs. 1-12) according to claim 1, wherein the groove portion and the connecting passage portion have different cross-sectional areas. (see figs. 2, 3, or 8)
Regarding claim 6, Martin discloses the shaft member (24, figs. 1-12) according to claim 1, wherein the groove portion (76, fig. 8) has a circumferential groove portion (e.g. 78C, fig. 2) extending from the opening (e.g. 66C, fig. 2) in a circumferential direction of the sliding portion, and an axial groove portion (e.g. axial grooves 76 with bottom 84, fig. 8) extending from an end side of the circumferential groove portion in an axial direction of the sliding portion, the end side being opposite to the opening. (see fig. 8)
Regarding claim 7, Martin discloses the shaft member (24, figs. 1-12) according to claim 6, wherein the axial groove portion (e.g. axial groove 76 with bottom 84) is inclined (e.g. bottom surface is non-flat, e.g. a curved, see fig. 6)with respect to an axial direction of the sliding portion (see para 49).
Regarding claim 11, Martin discloses a planetary gear unit comprising the shaft member (24, figs. 1-12) according to claim 1, the planetary gear member provided on an outer circumferential side of the shaft member. (see fig. 11)
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 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 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over Martin et al.(US 20230054545 A1) in view of Suzuki et al. (US 4285551 A).
Regarding claim 8, Martin discloses the shaft member (24, figs. 1-12) according to claim 1 but fails to disclose wherein the groove portion has a throttle portion between the opening and the groove end, the throttle portion having a smaller cross-sectional area than other parts.
Suzuki teaches a shaft member (13,fig. 2) wherein the groove portion (18, fig. 2) has a throttle portion (e.g. 20, 20a, fig. 2) between the opening and the groove end, the throttle portion having a smaller cross-sectional area (e.g. 20a) than other parts.
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Martin by adding a throttle portion as taught by Suzuki, such as the communication and feed circulation of the lubrication fluid can be improved.
Regarding claim 9, Martin/ Suzuki discloses the shaft member (24, figs. 1-12) as modified according to claim 8 but fails to disclose wherein the throttle portion is provided over a range G that starts at the groove end and extends from the groove end toward the opening by 3% of the outer diameter of the sliding portion.
While the reference does not explicitly disclose the specific range G of the throttle portion, it would have been obvious to one of ordinary skill in the art at the time of the invention to change the range of the throttle portion, since such a modification would have involved a mere change in the size (or dimension) of a component. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device, and the device having the claimed dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device, Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Martin et al.(US 20230054545 A1) in view of in view of Suzuki et al. (US 4285551 A) and further in view of WANG et al. (US 20230052558 A1).
Regarding claim 10, Martin/ Suzuki discloses the shaft member (24, figs. 1-12) as modified according to claim 8 but fails to disclose wherein the throttle portion has a cross-sectional area that changes in an axial direction of the sliding portion.
WANG teaches a throttle sleeve ( e.g. 30, fig. 2) wherein the throttle portion has a cross-sectional area that changes in an axial direction of the valve core (40). (see claim 11)
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Martin by modifying the throttle portion as taught by WANG, such as the communication and feed circulation of the lubrication fluid can be improved.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Martin et al.(US 20230054545 A1) in view of Savaria et al. (US 10683773 B2).
Regarding claim 12, Martin discloses a planetary gear device comprising: a sun gear (128, fig. 11); one or more of the planetary gear units (e.g. 126, fig. 11) according to claim 11, the planetary gear units (126) each meshing with the sun gear (128) on an inner circumferential side, the planetary gear units (126) each meshing with an internal gear (130) on an outer circumferential side;
But Martin fails to disclose a first shaft member and a carrier to which the shaft members of the planetary gear units are fixed; the carrier being connected to a second shaft member.
Savaria teaches a planetary gearset (e.g. 30, figs. 1-4) including a first shaft member 34 (fig. 4), a sun gear 32, and a carrier (40, fig. 4) to which shaft members (38) of the planetary gear units (46) are fixed, the carrier being connected to a second shaft member (44, 24, fig. 1).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify Martin by adding a first and a second shaft member as taught by Savaria, such as the planetary gear can be connected to the input and output in order to provide a reliable and an efficient torque transfer.
Response to Arguments
Applicant's arguments filed have been fully considered but they are not persuasive. 08/11/2026.
Applicant argues with respect to the rejection under 112(a) “In response, the Applicant respectfully disagrees. The Applicant respectfully submits that the claims, as drafted comply with the written description requirement and, therefore, that the claims do not need to be amended to address this rejection. To this point, the Applicant respectfully directs the Examiner's attention to paragraph [0045-0046] of the Specification, which states in relevant part:
Such a planetary gear device 10 has a unique structure that causes a certain range of each shaft member 22 to constantly receive a large load from the planetary gear member 21 when the shaft member 22 slides against the planetary gear member 21 as the planetary gear device 10 operates. In other words, when the shaft member 22 slides against the planetary gear member 21, the shaft member 22 is divided into a main load portion 33 that receives a large load from the planetary gear member 21, and a sub load portion 34 that receives a smaller load than the main load portion 33. Specifically, the shaft member 22 of the planetary gear unit 16 constantly receives a large load at the main load portion 33 during operation of the planetary gear device 10, and the range of the main load portion 33 hardly changes even if the shaft member 22 rotates.
(The Specification at paragraph [0045].) In addition, paragraph [0046] of the Specification further explains that, using the coordinate system of Fig. 4 and Fig. 5, the main load portion 32 is set mainly in the range of 00 to 1800 in the coordinate system, while the sub load portion 31 is set mainly in the range of 1800 to 3600. (The Specification at paragraph [0046].)
Based on these disclosures, the Applicant respectfully submits that those skilled in the art would understand that, in a planetary gear device, the shaft member revolves together with the carrier. As a result, the force exerted by the planetary gear member on the shaft member is always directed in a substantially constant direction. Consequently, a specific circumferential region on the outer circumferential surface of the shaft member (the main load portion) continuously receives a large load. This hardly changes, even as the shaft member rotates. The Applicant respectfully submits, therefore, that the construction and operation of the planetary gear is disclosed with sufficient particularity that those skilled in the art would be able to make and use the invention without additional clarification. As such, the Applicant respectfully submits that the claims comply with the requirements of 35 U.S.C. § 112(a) and that the rejection should be withdrawn”. This is not persuasive. The paragraph of 45 of the specification describes two load regions (e.g. a main load portion 33, a sub load portion 34) that exist but fails to describe how these are defined or what specific structure/material causes these two regions to function this way. Further, the paragraph of 46 of the specification describes the main load portion 32 is set mainly in the range of 0-180 degrees and the sub load portion 31 is set mainly in the range of 180 to 360 degrees as shown in fig. 4. However, this also does not make clear whether the regions referred to are due to a surface characteristic or a changing region on the shaft. Thus, the specification does not provide support for a definition of what these are or how to construct these regions. Therefore, examiner respectfully disagrees.
Applicant further argues “In connection with this rejection, the Examiner stated that for "the examination purpose, the main load portion if considered as non-indented portion and the sub load portion is considered as an indented portion." (The Office Action dated May 7, 2026, at page 3, lines 13-14.)
In response, the Applicant respectfully submits that the Examiner's interpretation of this language in the claims is in error. In particular, the Applicant respectfully submits that there is no support in the Specification for the interpretation advocated by the Examiner”. This is not persuasive. Figure 5 and paragraph 50 describe the opening 41 and the grove portion 43 are provided in the sub load portion 34, which is opposite the main load portion 33 in the radial direction of the shaft member 22. Therefore, the Examiner's interpretation of this language in the claims is not in error.
Applicant further argues “In the instant patent application, the main load portion and the sub load portion are not defined by structural features such as the presence or absence of indentations. Instead, these are functional designations based on the magnitude of the load applied during operation of the planetary gear device, as should be apparent to those skilled in the art”. This is not persuasive. This further supports that these features are not enabled since, firstly, this in not specifically disclosed in the specification and arguments cannot be substituted as support for enabling disclosure, and secondly, the specific matter of operating the device to achieve the claimed regions is not described and does not lead to a structure distinction that one skilled in the art would make to achieve the combination that is recited in the claim. Therefore, examiner respectfully disagrees.
Applicant argues with respect to the rejection under 112(b), “Concerning this rejection, the Examiner repeated the interpretation that for "the examination purpose, the main load portion is considered as non-indented portion and the sub load portion is considered as an indented portion." (The Office Action dated May 7, 2026, at page 4, lines 9-10)
For the same reasons discussed hereinabove, the Applicant respectfully submits that this rejection is in error. Those skilled in the art would appreciate the meanings of the "main load portion" and the "sub load portion" as described in the above-captioned patent application. Accordingly, the Applicant respectfully requests that the rejection be withdrawn.” This is not persuasive. Figure 5 and paragraph 50 describe the opening 41 and the grove portion 43 are provided in the sub load portion 34, which is opposite the main load portion 33 in the radial direction of the shaft member 22. Therefore, the Examiner's interpretation of this language in the claims is not in error. It is noted that the applicant’s argument regarding the rejection under 112(a) states that the two regions do not depend on any structure and instead are based on the load applied during operation. This leads to the device can be used in many ways and therefore the same structure may or may not infringe based on how someone uses the device. This type of changing scope is indefinite.
Applicant argues with respect to the rejection under 102, the applicant does not provide further argument beyond those addressing the rejection under 112(a) or 112(b) regarding claim interpretation. Applicant argues “Simply, the Applicant respectfully submits that Martin et al. does not describe or suggest a sliding portion "wherein, when the sliding portion slides against the planetary gear member, the sliding portion is divided into a main load portion and a sub load portion, the main load portion receiving a large load from the planetary gear member, the sub load portion receiving a smaller load than the main load portion, and the second region is the main load portion and the first region is the sub load portion."
This is not persuasive. Martin et al. describes a sliding portion (e.g. 136, fig. 12) "wherein, when the sliding portion slides against the planetary gear member (e.g. 132, fig. 12), the sliding portion is divided into a main load portion (see annotated fig. A above) and a sub load portion, the main load portion receiving a large load from the planetary gear member, the sub load portion receiving a smaller load than the main load portion, and the second region is the main load portion and the first region is the sub load portion. Since the main load portion has no grooves, it carriers most of the load compared to the sub load portions which contain groove portion as shown in fig. 8. Therefore, examiner respectfully disagrees.
Applicant further argues “ First, there is a fundamental difference between the operation of claimed invention and the device described by Martin et al. Specifically, the presently claimed invention concerns, inter alia, a planetary gear device in which a shaft member fixed to a carrier revolves together with a planetary gear member. In contrast, Martin et al. relates to a feed circuit for supplying lubricating oil at the interface between a journal bearing and a rotor of a turbine engine. (See, e.g., Martin et al. at the Title: "FEED CIRCUIT WITH SLOT(S) AT INTERFACE BETWEEN JOURNAL BEARING AND ROTOR"). Moreover, the technical field and the principle of operation of the presently claimed invention differ from the device described by Martin et al.” This is not persuasive. Martin et al. describes a planetary gear device (124) in which a shaft member (24, fig. 12) fixed to a carrier revolves together with a planetary gear member (132). (see fig. 11)
Second, the concept of a main load portion/sub load portion, as now recited by amended claim 1, is absent from Martin et al. As noted above, claim 1 now recites that "the sliding portion is divided into a main load portion and a sub load portion ... the main load portion receiving a large load from the planetary gear member ... the sub load portion receiving a smaller load than the main load portion." This feature is based on the technical concept that, because of the revolving motion unique to a planetary gear device, a large load is constantly concentrated in a specific circumferential region of the outer circumferential surface of the shaft member. In contrast, the journal bearing described by Martin et al. supplies and distributes lubricating oil around the entire circumference of a rotating rotor and does not have such a mechanism by which load is concentrated in one direction.” This is not persuasive. Martin et al. describes a sliding portion (e.g. 136, fig. 12) "wherein, when the sliding portion slides against the planetary gear member (e.g. 132, fig. 12), the sliding portion is divided into a main load portion (see annotated fig. A above) and a sub load portion, the main load portion receiving a large load from the planetary gear member, the sub load portion receiving a smaller load than the main load portion, and the second region is the main load portion and the first region is the sub load portion. Since the main load portion has no grooves, it carriers most of the load compared to the sub load portions which contain groove portion as shown in fig. 8. Therefore, examiner respectfully disagrees.
Conclusion
THIS ACTION IS MADE FINAL. 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 FARHANA PERVIN whose telephone number is (571)272-4644. The examiner can normally be reached Mon-Fri 7:30-5:00.
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/FARHANA PERVIN/Examiner, Art Unit 3655
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