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 .
Specification
The disclosure is objected to because of the following informalities:
On page 1, line 16, “turning the direction” should be changed to --turning.--
On page 5, line 16, “an” should be deleted.
Appropriate correction is required.
Claim Objections
Claim 20 is objected to because of the following informalities: “a lean” should be changed to --the lean--. Appropriate correction is required.
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 1-5, 9, 10, 12 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rigaux (WO 2011/107674 A1). Rigaux discloses a lean actuator, comprising: a motor 10; an input shaft (e.g., the shaft with the wheel 14b on one end and the worm 15a on the other end) coupled to a motor shaft (e.g., the shaft with the worm 15b on one end) of the motor; a reducer (e.g., R2 and/or R1) having an output shaft (e.g., 13) coupled with a lean bar (e.g., 4), and coupled to the input shaft; and a housing (e.g., “casings” – see the paragraph beginning with “FIG. 10a”) receiving the reducer and coupled with the motor (Fig. 10a). The lean actuator further comprises an electronic control unit (“control member” (see, for example, the paragraph beginning with “According to a second characteristic”), “controller” (see, for example, the paragraph beginning with “The information”)) controlling the motor. At least one of the motor shaft or the input shaft have serrations (e.g., the input shaft has serrations at 14b). The output shaft has a coupling portion coupled with the lean bar (“the shaft 13 which fixedly carries the balance wheel 4” - see the paragraph beginning with “FIG. 10a”). The housing is coupled with a bearing (e.g., 12A, 12R) supporting rotation of the output shaft (see the paragraphs beginning with “FIGS. 8 to 10” and “FIG. 10a”). The lean actuator further comprises a locking member for restricting rotation of the lean bar, wherein the locking member locks rotation of the input shaft to restrict rotation of the lean bar (see the paragraph beginning with “More specifically” through the paragraph beginning with “According to another particular characteristic”, the paragraph beginning with “When the vehicle is stopped”, the paragraph beginning with “According to a preferred embodiment” and the paragraph beginning with “FIG. 10a”). The lean actuator further comprises a sensor unit (e.g., an “angle sensor” – see the paragraphs beginning with “These sensors” and “FIGS. 11 and 12”) sensing a rotational angle of the output shaft. A mobility vehicle (e.g., Fig. 7) comprises the lean actuator.
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 6-8 are rejected under 35 U.S.C. 103 as being obvious over Rigaux (WO 2011/107674 A1) in view of Wang et al. (US 2023/0250865 A1) and also optionally/additionally the Wikipedia entry for “Strain wave gearing” (https://en.wikipedia.org/wiki/Strain_wave_gearing) and/or the article “What Is the Difference Between a Spline and a Keyway” (https://www.afiparts.com/spline-vs-keyway). Rigaux teaches the limitations of claim 1, as explained above. Rigaux does not teach the limitations of claims 6-8. Wang teaches a reducer that includes a rotating cam (e.g., 41) coupled with an input shaft (e.g., at 103) and a fixed gear (e.g., 2) coupled to a housing (e.g., 111 and 112), and wherein an output shaft includes a gear portion (e.g., at 31) coupled with the rotating cam and engaged with the fixed gear. The reducer is a harmonic reducer (abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a harmonic reducer as taught by Wang for a reducer as taught by Rigaux in order to similarly provide a reduction in the relative rotation rates between the input shaft and the output shaft via the reducer. §MPEP 2143(I)(B). Advantages of using a harmonic reducer include: “no backlash”, “compactness and light weight”, “high gear ratios”, “reconfigurable ratios within a standard housing”, “good resolution and excellent repeatability (linear representation) when repositioning inertial loads”, “high torque capability”, “coaxial input and output shafts”, and “High gear reduction ratios are possible in a small volume (a ratio from 30:1 up to 320:1 is possible in the same space in which planetary gears typically only produce a 10:1 ratio).” (See the Wikipedia entry for “Strain wave gearing” - https://en.wikipedia.org/wiki/Strain_wave_gearing). In Wang, the input shaft and the rotating cam are connected via a splined connection. However, Wang also teaches connections that use key pins (see Fig. 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a connection that uses a key pin, as taught by Wang, for the splined connection between the outer surface of the input shaft and the rotating cam in order to similarly couple the input shaft and the rotating cam. §MPEP 2143(I)(B). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a connection that uses a key pin, as taught by Wang, for the splined connection between the outer surface of the input shaft and the rotating cam because “Keyways are easier and cost less to make.” (See page 3 of the article “What Is the Difference Between a Spline and a Keyway”- https://www.afiparts.com/spline-vs-keyway). 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 9-11 are rejected under 35 U.S.C. 103 as being obvious over Rigaux (WO 2011/107674 A1) in view of Wang et al. (US 2023/0250865 A1), optionally/additionally the Wikipedia entry for “Strain wave gearing” (https://en.wikipedia.org/wiki/Strain_wave_gearing), and further in view of Miyake et al. (JP 2019-196108 A). Rigaux teaches the limitations of claim 1, as explained above. Rigaux does not teach the limitations of claims 9-11. Wang teaches a reducer that includes a rotating cam (e.g., 41) coupled with an input shaft (e.g., at 103) and a fixed gear (e.g., 2) coupled to a housing (e.g., 111 and 112), and wherein an output shaft includes a gear portion (e.g., at 31) coupled with the rotating cam and engaged with the fixed gear. The reducer is a harmonic reducer (abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a harmonic reducer as taught by Wang for a reducer as taught by Rigaux in order to similarly provide a reduction in the relative rotation rates between the input shaft and the output shaft via the reducer. §MPEP 2143(I)(B). Advantages of using a harmonic reducer include: “no backlash”, “compactness and light weight”, “high gear ratios”, “reconfigurable ratios within a standard housing”, “good resolution and excellent repeatability (linear representation) when repositioning inertial loads”, “high torque capability”, “coaxial input and output shafts”, and “High gear reduction ratios are possible in a small volume (a ratio from 30:1 up to 320:1 is possible in the same space in which planetary gears typically only produce a 10:1 ratio).” (See the Wikipedia entry for “Strain wave gearing” -https://en.wikipedia.org/wiki/Strain_wave_gearing). Miyake teaches a locking member (e.g., 5) for restricting rotation of a lean bar (e.g., at 3), wherein the locking member locks rotation of an input shaft (e.g., 41) to restrict rotation of the lean bar, wherein a locking gear (e.g., 42) is coupled to the input shaft, and wherein the locking member includes: a locking pin (e.g., 52) advancing to engage with the locking gear or reversing to disengage from the locking gear; and a driving unit (e.g., at 51) advancing or reversing the locking pin. 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 based on a combination of Rigaux and Wang, as set forth above, with a locking member, as taught by Miyake, “to fix the vehicle's posture” (paragraph 0005). 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 13 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Rigaux (WO 2011/107674 A1) in view of Elrod (US 2009/0016833 A1). Rigaux teaches the limitations of claim 12, as explained above. Rigaux does not teach the limitations of claims 13 and 15-18. Elrod teaches a sensor unit sensing a rotational angle (paragraph 0032) of an output shaft (e.g., 121), wherein the sensor unit includes: a rotational shaft (e.g., 138) rotating in conjunction with the output shaft; and a sensor (e.g., 160) sensing a rotational angle (paragraph 0032) of the rotational shaft. An end of the rotational shaft is coupled to the sensor, and another end of the rotational shaft is supported on a bearing (e.g., 132) coupled to a housing (e.g., 122). The output shaft and the rotational shaft are connected to each other through a belt (e.g., 145). A pulley (e.g., 142) around which the belt is wound is coupled to the output shaft, wherein a diameter of the pulley is larger than a diameter of the rotational shaft (Figs. 2, 5 and 6). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a sensor as taught by Elrod with an invention as taught by Rigaux in order to “convert angular position of a shaft to an analog or digital code” (paragraph 0032 of Elrod) to be used to provide “information...to the controller which will thus determine the angle of inclination necessary to maintain the stability of the vehicle and control the inverters in order to create a motor torque differential between the right-hand wheel motor and the left-hand wheel motor: this is this differential and the cabled position of the oscillating arms which make it possible to tilt the vehicle.” (See the paragraph beginning with “The information” in Rigaux.) 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 14 is rejected under 35 U.S.C. 103 as being unpatentable over Rigaux (WO 2011/107674 A1) in view of Elrod (US 2009/0016833 A1) as applied to claim 13 above, and further in view of Ikeda (US 2011/0278905 A1). Elrod further teaches, “By way of example only and not limitation, the circumferences of the pulleys 142, 146, may have a one-to-one ratio. When mechanically linked by the timing pulley 145 having teeth, the angular rotation of the drive pulley 142 is substantially transmitted to the timing pulley 146 so that the rate of revolution of the spindle is accurately reflected by the rotation of the encoder shaft 138. In other embodiments, the timing belt 145 may connect pulleys 142, 146, with other circumferential ratios” (paragraph 0027) and “In an exemplary embodiment, the circumferences of the drive pulley 142 and the timing pulley 146 are similar so that rate of revolution is transmitted from the spindle-pulley adapter 120 to the encoder shaft 138 in a one-to-one ratio. Although one embodiment is depicted and discussed above, it will be understood and appreciated by those of ordinary skill in the art that other circumferential ratios of the pulleys 142, 146, or gears, exist, and other various techniques for transmitting the rate of revolution between the spindle and the encoder shaft 160 are available. These configurations are also contemplated by the present invention” (paragraph 0035). Elrod does not explicitly teach the limitations of claim 14. Ikeda teaches a sensor unit wherein a gear ratio is larger than 1 (paragraph 0059). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make a sensor unit of an invention based on a combination of Rigaux and Elrod, as set forth above, such that a gear ratio of the rotational shaft to the output shaft is larger than 1, according to the known technique taught by Ikeda, in order to “detect the position of a moving member with a higher degree of accuracy” (abstract of Ikeda). 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 19 is rejected under 35 U.S.C. 103 as being unpatentable over Rigaux (WO 2011/107674 A1) in view of Elrod (US 2009/0016833 A1) as applied to claim 16 above, and further in view of Steinich (US 6,561,451 B1). Elrod does not teach the limitations of claim 19. Steinich teaches a bearing (e.g., 4) provided to pressurize an outer surface of a belt (e.g., 3). 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 sensor unit of an invention based on a combination of Rigaux and Elrod, as set forth above, with a bearing (e.g., 4) provided to pressurize an outer surface of the belt, according to the known technique taught by Steinich, “so that by rotating same it is possible to deflect the toothed belt 3 into a position in which it enjoys the appropriate tension” (column 12, lines 5-7 of Steinich). 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 13-15 are rejected under 35 U.S.C. 103 as being obvious over Rigaux (WO 2011/107674 A1) in view of Jung (US 2023/0364959 A1).
The applied reference (i.e., Jung) has a common applicant 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).
Rigaux teaches the limitations of claim 12, as explained above. Rigaux does not teach the limitations of claims 13-15. Jung teaches a sensor unit that includes: a rotational shaft (e.g., 73) rotating in conjunction with an output shaft 53; and a sensor (e.g., 74) sensing a rotational angle of the rotational shaft, wherein a gear ratio of the rotational shaft to the output shaft is larger than 1 (paragraph 0082). An end of the rotation shaft is coupled to the sensor (Fig. 5). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use a sensor unit as taught by Jung for an invention as taught by Rigaux to increase “sensor accuracy” (paragraph 0097). Jung does not explicitly teach that another end of the rotational shaft is supported on a bearing coupled to the housing. Rigaux teaches an end of a shaft 13 that is supported on a bearing (e.g., 12A, 12R) coupled to a housing (e.g., “casings” – see the paragraph beginning with “FIG. 10a”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to support another end of the rotational shaft of an invention based on a combination of Rigaux and Jung, as set forth above, on a bearing coupled to the housing, similar to the manner in which the end of the shaft 13 is supported on a bearing coupled to a housing in Rigaux, so that the shaft “is pivotably mounted on the bearings” (see the paragraph beginning with “FIG. 10a” in Rigaux). 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).
This rejection under 35 U.S.C. 103 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); 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 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. See generally MPEP § 717.02.
Claims 1, 2, 4, 6-8, 12-15 and 20 are rejected under 35 U.S.C. 103 as being obvious over Jung (US 2023/0364959 A1) in view of Wang et al. (US 2023/0250865 A1) and also optionally/additionally the article “What Is the Difference Between a Spline and a Keyway” (https://www.afiparts.com/spline-vs-keyway) .
The applied reference (i.e., Jung) has a common applicant 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).
Jung teaches a lean actuator, comprising: a motor 51; an input shaft (e.g., “An input shaft of the reducer 52” – paragraph 0057) coupled to a motor shaft (e.g., 51a) of the motor; a reducer (e.g., 52) having an output shaft (e.g., “the output shaft 53 of the reducer 52” – paragraph 0057) coupled with a lean bar (e.g., 40), and coupled to the input shaft. The lean actuator further comprises an electronic control unit (e.g., 80) controlling the motor. The output shaft has a coupling portion coupled with the lean bar (paragraph 0055). The reducer is a harmonic reducer (paragraphs 0074-0076). The lean actuator further comprises a sensor unit sensing a rotational angle of the output shaft, wherein the sensor unit includes: a rotational shaft (e.g., 73) rotating in conjunction with the output shaft; and a sensor (e.g., 74) sensing a rotational angle of the rotational shaft, wherein a gear ratio of the rotational shaft to the output shaft is larger than 1 (paragraph 0082). An end of the rotation shaft is coupled to the sensor (Fig. 5). A mobility vehicle (e.g., 10) comprises the lean actuator. Jung does not explicitly teach a housing receiving the reducer and coupled with the motor. Wang teaches a housing (e.g., 111 and 112) receiving a reducer and coupled with a motor (paragraph 0005). 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 housing as taught by Wang for an invention as taught by Jung in order to protect the components of the reducer. Jung does not explicitly teach the limitations of claim 6. In Wang, the reducer includes a rotating cam (e.g., 41) coupled with an input shaft (e.g., at 103) and a fixed gear (e.g., 2) coupled to the housing, and wherein an output shaft includes a gear portion (e.g., at 31) coupled with the rotating cam and engaged with the fixed gear. 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 Jung with a reducer that includes a rotating cam coupled with an input shaft and a fixed gear coupled to the housing, and wherein an output shaft includes a gear portion coupled with the rotating cam and engaged with the fixed gear, according to the known technique taught by Wang, in order to provide a reduction in the relative rotation rates between the input shaft and the output shaft via the reducer. In Wang, the input shaft and the rotating cam are connected via a splined connection. However, Wang also teaches connections that use key pins (see Fig. 4). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a connection that uses a key pin, as taught by Wang, for the splined connection between the outer surface of the input shaft and the rotating cam in order to similarly couple the input shaft and the rotating cam. §MPEP 2143(I)(B). Furthermore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute a connection that uses a key pin, as taught by Wang, for the splined connection between the outer surface of the input shaft and the rotating cam because “Keyways are easier and cost less to make.” (See page 3 of the article “What Is the Difference Between a Spline and a Keyway”- https://www.afiparts.com/spline-vs-keyway). Jung does not explicitly teach that another end of the rotational shaft is supported on a bearing coupled to the housing. Wang teaches an end of a shaft (e.g., 102) that is supported on a bearing (e.g., 121, 122) coupled to a housing (e.g., 111 and 112). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to support another end of the rotational shaft of an invention based on a combination of Jung and Wang, as set forth above, on a bearing coupled to the housing, similar to the manner in which the end of the shaft 102 is supported on a bearing coupled to a housing in Wang, “so that the output portion 102 is rotatable” (paragraph 0104 of Wang). 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).
This rejection under 35 U.S.C. 103 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); 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 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. See generally MPEP § 717.02.
Claims 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Jung (US 2023/0364959 A1) in view of Wang et al. (US 2023/0250865 A1) as applied to claim 1 above, and further in view of Miyake et al. (JP 2019-196108 A).
The applied reference (i.e., Jung) has a common applicant 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).
Jung does not teach a locking member. Miyake teaches a locking member (e.g., 5) for restricting rotation of a lean bar (e.g., at 3), wherein the locking member locks rotation of an input shaft (e.g., 41) to restrict rotation of the lean bar, wherein a locking gear (e.g., 42) is coupled to the input shaft, and wherein the locking member includes: a locking pin (e.g., 52) advancing to engage with the locking gear or reversing to disengage from the locking gear; and a driving unit (e.g., at 51) advancing or reversing the locking pin. 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 based on a combination of Jung and Wang, as set forth above, with a locking member, as taught by Miyake, “to fix the vehicle's posture” (paragraph 0005). 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).
This rejection under 35 U.S.C. 103 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); 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 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. See generally MPEP § 717.02.
Claims 1, 2, 4, 7, 12-15 and 20 are rejected under 35 U.S.C. 103 as being obvious over Jung (US 2023/0364959 A1) in view of Rigaux (WO 2011/107674 A1).
The applied reference (i.e., Jung) has a common applicant 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).
Jung teaches a lean actuator, comprising: a motor 51; an input shaft (e.g., “An input shaft of the reducer 52” – paragraph 0057) coupled to a motor shaft (e.g., 51a) of the motor; a reducer (e.g., 52) having an output shaft (e.g., “the output shaft 53 of the reducer 52” – paragraph 0057) coupled with a lean bar (e.g., 40), and coupled to the input shaft. The lean actuator further comprises an electronic control unit (e.g., 80) controlling the motor. The output shaft has a coupling portion coupled with the lean bar (paragraph 0055). The reducer is a harmonic reducer (paragraphs 0074-0076). The lean actuator further comprises a sensor unit sensing a rotational angle of the output shaft, wherein the sensor unit includes: a rotational shaft (e.g., 73) rotating in conjunction with the output shaft; and a sensor (e.g., 74) sensing a rotational angle of the rotational shaft, wherein a gear ratio of the rotational shaft to the output shaft is larger than 1 (paragraph 0082). An end of the rotation shaft is coupled to the sensor (Fig. 5). A mobility vehicle (e.g., 10) comprises the lean actuator. Jung does not explicitly teach a housing receiving the reducer and coupled with the motor. Rigaux teaches a lean actuator, comprising: a motor 10; an input shaft (e.g., the shaft with the wheel 14b on one end and the worm 15a on the other end) coupled to a motor shaft (e.g., the shaft with the worm 15b on one end) of the motor; a reducer (e.g., R2 and/or R1) having an output shaft (e.g., 13) coupled with a lean bar (e.g., 4), and coupled to the input shaft; and a housing (e.g., “casings” – see the paragraph beginning with “FIG. 10a”) receiving the reducer and coupled with the motor (Fig. 10a). 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 housing as taught by Rigaux for an invention as taught by Jung in order to protect the components of the reducer. Jung does not explicitly teach that another end of the rotational shaft is supported on a bearing coupled to the housing. Rigaux teaches an end of a shaft 13 that is supported on a bearing (e.g., 12A, 12R) coupled to a housing (e.g., “casings” – see the paragraph beginning with “FIG. 10a”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to support another end of the rotational shaft of an invention based on a combination of Jung and Rigaux, as set forth above, on a bearing coupled to the housing, similar to the manner in which the end of the shaft 13 is supported on a bearing coupled to a housing in Rigaux, so that the shaft “is pivotably mounted on the bearings” (see the paragraph beginning with “FIG. 10a” in Rigaux). 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).
This rejection under 35 U.S.C. 103 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); 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 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. See generally MPEP § 717.02.
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, 2, 4, 9-14 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 13-19 of copending Application No. 19/108,736 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of said claims of the instant application (i.e., 19/112,233) are essentially recited in said claims of the reference application. In particular, the limitations of claim 1 of the instant application are essentially recited in claims 1 and 13 of the reference application, the limitations of claims 1 and 2 of the instant application are essentially recited in claims 1 and 13 of the reference application, the limitations of claims 1 and 4 of the instant application are essentially recited in claims 1 and 13 of the reference application, the limitations of claims 1 and 9 of the instant application are essentially recited in claims 1, 13 and 14 of the reference application, the limitations of claims 1, 9 and 10 of the instant application are essentially recited in claims 1 and 13-15 of the reference application, the limitations of claims 1, 9 and 11 of the instant application are essentially recited in claims 1 and 13-15 of the reference application, the limitations of claims 1 and 12 of the instant application are essentially recited in claims 1, 13 and 16 of the reference application, the limitations of claims 1, 12 and 13 of the instant application are essentially recited in claims 1, 13, 16 and 17 of the reference application, the limitations of claims 1 and 12-14 of the instant application are essentially recited in claims 1, 13 and 16-18 of the reference application, and the limitations of claims 1 and 20 of the instant application are essentially recited in claims 1, 13 and 19 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KEITH J FRISBY whose telephone number is (571)270-7802. The examiner can normally be reached M-F 9:00AM - 5:00PM.
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, Jason Shanske can be reached at (571)270-5985. 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.
/KEITH J FRISBY/ Primary Examiner, Art Unit 3614