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 .
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.
Election/Restrictions
Applicant's election with traverse of Group I, corresponding to claims 1-15, in the reply filed on 02/17/2026 is acknowledged. The traversal is on the ground(s) that there is no serious burden on the Examiner. This is not found persuasive because examination burden is not limited to only search, but rather includes numerous other activities conducted throughout prosecution, such as careful consideration of amended claim scope, careful consideration of all arguments, reconsideration of all art in view of arguments/amendments, updating prior art searches, formulating responses, constructing formal written replies, etc.; and the burden increases as a function of the number of patentably distinct species under examination. Note that a proper search in accordance with the principles of compact prosecution includes not only the claimed features, but also those features that could reasonably be expected to be amended into the claims later in prosecution (e.g., the features shown in the figures or described in the written description). Therefore, there would be serious burden on the examiner if restriction is not required.
The requirement is still deemed proper and is therefore made FINAL.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference characters "120," disclosed as “drive disc 120” in, for example, para. 38, and "143", disclosed as “reaction plate 143” in, for example, para. 38 have both been used to designate the drive disc 120. Examiner notes that para. 36 recites “[t]he no-back unit 140 is disposed on a second side 122 of the drive disc 120”, and para. 38 recites “[t]he no-back cage 142 is adjacent to the drive disc 120” and “[t]he no-back unit 140 further includes a reaction plate 143 adjacent to the no-back cage 142”. Therefore, by the instant disclosure, the drive disc 120 does not comprise the reaction plate 143, e.g. the disc 120 is expected to be a separate structural element from the reaction plate 143. However, instant figure 2 shows labeling 143 pointing to the same element as labeling 120; and does not show element 143 as located on the second side 122.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 3 and 10 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 3 recites “the no-back unit comprises … a reaction plate adjacent to the no-back cage”, where Claim 1 requires “a drive disc connected to the screw shaft”, which is unclear in light of the specification. Instant figure 2 shows drive disc 120 and reaction plate 143 labeled as the same element, and the no-back unit 140 is disclosed as including the reaction plate 143 (e.g., para. 38); but the drive disc is not disclosed as comprising the no-back unit (e.g., by paras. 36, 38). Therefore, in light of the specification, it is unclear what structure is required by the claim, and it is unclear if Applicant is renaming the same element. For instance, it is unclear if the claim requires a drive disc which is a reaction plate, or if the claim requires separate structural elements.
Claim 10 is similarly rejected, as detailed above.
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.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being clearly anticipated by Kannan et al. (US 2025/0289578).
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claims 1-15, the disclosure of Kannan is not complex in comparison to the instant disclosure, and Kannan’s disclosure, including both the labeled and unlabeled elements of prior art figure 2B, is in sufficient proximity to the scope of the claimed limitations that the pertinence of the prior art is considered apparent. Further mapping of the art is therefore unnecessary by 37 C.F.R. 1.104(c)(2) (i.e., the rejection of claims is mapped to the art when a reference is complex or shows or describes inventions other than that claimed by the applicant), e.g. the limitations of the respective claims are considered to flow naturally from the art.1
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 4-9, and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Eaton (EP 4,269,234), in view of Philippe (US 2018/0142743).
The current application is related to EP 25 16 7571 and the current claims are substantially similar in scope to the corresponding EPO claims. By adopting and incorporating herein by reference the explanations of the closest prior art as set forth in the Search Report, 2 the examiner meets the burdens of 35 U.S.C. 132(a)3 [e.g., insomuch as the reasons for rejection and references are stated and the Search Report provides such information as may be useful in judging the propriety of continuing the prosecution of this application] and 37 CFR 1.104(c)(2)4 [e.g., insomuch as the explanations of the Search Report are sufficient to make the pertinence of each reference apparent]. See the copy of the Search Report filed in this current application on 10/29/2024. The pertinence of the prior art with regards to Claims 1, 4, 8, 11, and/or 15 are met by the explanations detailed above.
Regarding Claim 2 and 9, the prior art discloses a monolithic connection as shown, and therefore cannot be said to read on the limitation that the drive disc is splined to the screw shaft. However, splined connections were old and well-known in the mechanical arts, and provided the known advantage of a rotationally-locked connection of parts that can be separated, which facilitates repair and/or adjustment. Further, it has been held5 that it would be obvious to make components removable if it were to be considered desirable for any reason. Therefore, it would have been obvious to one of ordinary skill in the art prior to the time of effective filing to replace the monolithic connection of the prior art with a splined connection, for the expected benefit of allowing a rotationally-locked connection between parts which can be separated to facilitate repair and/or adjustment.
Regarding Claim 3 and 10, the prior art discloses first needle bearings interposed between the reaction plate and the one-way clutch as shown in figure 2, but does not explicitly disclose second needle bearings. However, it has been held that the mere duplication of known parts has no patentable significance unless a new and unexpected result is produced.6 In the instant case, the claimed multiplicity of similar parts do not appear to change the function of the claimed device, and the device of the prior art having the number of similar parts, as claimed, would not change the function in any way. Therefore, since the only difference between the structure of the prior art and that of the claimed device is a recitation of duplicate parts, and since the claimed device having the number of parts would not function differently than the device of the prior art, the claimed device is not patentably distinct from the device of the prior art.
Regarding the explicit ranges of Claims 5-7 and 12-14, it has been held to be well-within the skill of one of ordinary skill in the art to orient the angle of a device according to design specifications. The claimed angular ranges/dimensions do not appear to change the function of the claimed device, and applying the ranges/dimensions, as claimed, to the device of the prior art would not change the function in any way. Therefore, since the only difference between the structure of the prior art and that of the claimed device is a recitation of relative ranges/dimensions, and since the claimed device having the relative ranges/dimensions would not function differently than the device of the prior art, the claimed device is not patentably distinct from the device of the prior art. 7
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to T. S. FIX whose telephone number is (571)272-8535. The examiner can normally be reached M-Th 10a-3p.
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, Minnah Seoh can be reached at 5712707778. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T. SCOTT FIX/Primary Examiner, Art Unit 3618
1 See In re Jung, 637 F.3d 1356 (Fed. Cir. 2011) which states “There has never been a requirement for an examiner to make an on-the-record claim construction of every term in every rejected claim and to explain every possible difference between the prior art and the claimed invention in order to make out a prima facie rejection. This court declines to create such a burdensome and unnecessary requirement. […] “Section 132 merely ensures that an applicant at least be informed of the broad statutory basis for the rejection of his claims, so that he may determine what the issues are on which he can or should produce evidence.” Chester, 906 F.2d at 1578 (internal citation omitted)
2 See MPEP 1893.03(e)(II) which permits the examiner to adopt any portion or all of any report on patentability of the IPEA or ISA that would be relevant to U.S. practice, e.g., explanations of prior art, etc.
35 U.S.C.132(a): Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be re-examined. No amendment shall introduce new matter into the disclosure of the invention. [emphasis added]
4 37 CFR 1.104(c)(2): In rejecting claims for want of novelty or for obviousness, the examiner must cite the best references at his or her command. When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified. [emphasis added]
5 MPEP 2144.04(V)(C): In reDulberg, 289 F.2d 522, 523, 129 USPQ 348, 349 (CCPA 1961) (The claimed structure, a lipstick holder with a removable cap, was fully met by the prior art except that in the prior art the cap is “press fitted” and therefore not manually removable. The court held that “if it were considered desirable for any reason to obtain access to the end of [the prior art’s] holder to which the cap is applied, it would be obvious to make the cap removable for that purpose.”).
6 MPEP 2144.04(VI)(B): In reHarza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960) (Claims at issue were directed to a water-tight masonry structure wherein a water seal of flexible material fills the joints which form between adjacent pours of concrete. The claimed water seal has a “web” which lies in the joint, and a plurality of “ribs” projecting outwardly from each side of the web into one of the adjacent concrete slabs. The prior art disclosed a flexible water stop for preventing passage of water between masses of concrete in the shape of a plus sign (+). Although the reference did not disclose a plurality of ribs, the court held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced.).
7 MPEP 2144.04(IV): In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert, denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was 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 was not patentably distinct from the prior art device.
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