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 .
Election/Restrictions
Applicant's election with traverse of species 1 and A (fig.2 and fig.5) in the reply filed on 5/21/2026 is acknowledged. The traversal is on the grounds that all species are related such and only claim 6 is expressly not drawn on the elected species such that all species can be searched without undue burden. This is not found persuasive as follows:
Firstly, applicant’s argument that the restriction does not meet U.S. practice requirements (e.g., undue burden, etc.) are misplaced since the current application is a 371 of a PCT. MPEP 1895.01 and 1896 stipulate that U.S. national stage applications, which entered the national stage from international applications after compliance with 35 U.S.C. 371, are subject to unity of invention practice in accordance with 37 CFR 1.475 and 1.499, rather than the U.S. restriction practice set forth in 37 CFR 1.141-1.146. Although applicant has not expressly argued unity to exist, the examiner notes that all features that are common between claimed species were suggested by the art (see prior art rejections elsewhere below) such that unity is lacking a posteriori.[1] [2]
Secondly, even if this application were not a 371 of a PCT, the mutually exclusive features of the numerous species would require time and resources far in excess of that available for the processing of a single application since a proper search in accordance with 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 of the numerous species shown in the figures or described in the written description). See MPEP 904.03 which states “It is normally not enough that references be selected to meet only the terms of the claims alone… the search should, insofar as possible, also cover all subject matter which the examiner reasonably anticipates might be incorporated into applicant’s amendment… In doing a complete search, the examiner should find and cite references that, while not needed for rejecting the claims, would be useful for forestalling the presentation of claims to other disclosed subject matter regarded by applicant as his or her invention, by showing that this other subject matter is old or obvious” (emphasis added). Further, examination burden is not limited only to 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 (to include the U.S. Patents in all relevant classes, all relevant foreign art, all relevant publications and any relevant Non-patent literature), updating prior searches, formulating responses, constructing formal written replies, etc. the burden of which multiplies as a function of the number of patentably distinct species under examination. Accordingly, the numerous species cannot be examined in a single application without express admission that the species are "obvious variants" of one another. Lastly, the time spent searching, examining and preparing the current Office Action for only the elected species has exceeded the time allotted for a first action on the merits of a single application such that any additional search/examination for the non-elected species would have been unduly burdensome as a factual matter.
The requirement is still deemed proper and is therefore made FINAL.
Claim 6 is withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction requirement in the reply filed on 5/21/2026.
As detailed in the 35 USC 112 rejection below it is unclear how claims 7 and 11 read on the elected species such that they should be amended to clearly read on the elected species or be withdrawn.
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.
Claims 1-15 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The limitation “flat gearing” (claims 1-11) is unclear. The term is commonly used within the gear art to describe a gear shifting between close ratio stages so as to present a smooth/flat transition throughout shifting. Conversely, applicant’s gearing has no provision for shifting such that it is unclear what is meant by “flat gearing”. The examiner notes that claims 12-15, added by preliminary amendment, rely on the phrase “strain wave gearing” rather than “flat gearing”. Applicant’s written description sets forth a “flat gearing in the form of a strain wave gearing” but fails to set forth any additional forms of flat gearing that are not strain wave type such that the full broad scope of “flat gearing” is not readily/clearly apparent. Is “flat gearing” meant to be synonymous with “strain wave gearing”? Is “flat gearing” broader than “strain wave gearing” such that other types of gearings, that are not strain wave type, fall within the scope of “flat gearing”; and if so what other types?
The claim 1 limitation “the contact with the circular spline” lacks proper antecedent basis in a manner that renders the claim unclear.
The claim 1 limitation “the radial position of the tooth transverse of the at least one outer toothing of the flexspline” lacks proper antecedent basis in a manner that renders the claim unclear.
The limitation “is shifted” (independent claims 1 and 12; and elsewhere throughout the dependent claims) is unclear as to whether the deforming/shifting of the flex spline is being referenced or whether the limitation is to define a static shape, e.g., a radially reduced portion between the teeth of the flex spline.
The limitation “the radially reduced region” (claims 2 and 3) lacks proper antecedent basis in a manner that renders the claims unclear.
The claim 4 and claim 14 limitation “the front section” lacks proper antecedent basis in a manner that renders the claims unclear.
The claim 5 and claim 15 limitation “the region of one front surface” lacks proper antecedent basis in a manner that renders the claims unclear.
The claim 5 and claim 15 limitation “the radial shift assumes a constant value” is unclear as to what metric the value is to measure, e.g., shift speed, shift movement distance, shift shape distance, etc.
The claim 7 limitations “the axial course of the radial shift”, “the front section”, and “the radially reduced region” each lack proper antecedent basis in a manner that renders the claim unclear.
It is unclear how the claim 7 limitation “a concave shape” reads on the elected species since the term commonly refers to a cup shaped curve, whereas applicant’s elected figure 5 shows only flat surfaces without any curve. It appears that the claim refers to non-elected figure 10 and as such should be withdrawn.
The claim 8 limitations “the front section” and “the region of one or both front sides of the flexspline” lacks proper antecedent basis in a manner that renders the claims unclear. Further “front” is recited without reference frame and thus substantially non-limiting/unclear.
It is unclear how the claim 11 limitation “rollers or needles” reads on the elected species since the elected species figure 2 sets forth balls (14) rather than the non-elected rollers (14 of non-elected fig.12) or needles (14 of non-elected fig.13). As such the claim should be withdrawn.
The claim 12 limitation “the contact with the circular spline” lacks proper antecedent basis in a manner that renders the claim unclear.
The claim 12 limitation “the radial position of the tooth transverse of the at least one outer toothing of the flexspline” lacks proper antecedent basis in a manner that renders the claim unclear.
The remaining claims depend from the above and are thus similarly unclear/rejected.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Hsieh US20220243797.
Claims 1 and 12. A flat gearing (embodiment of figures 2-13) in the form of a strain wave gearing comprising: a circular spline (4) having an inner toothing (41); a dynamic spline (3) which is axially adjacent to the circular spline and has an inner toothing (31); a flexible flexspline (2) which is arranged inside the circular spline and dynamic spline and has at least one outer toothing (21, 22); and a wave generator (1) which is arranged inside the flexspline for deforming the flexspline in the radial direction, wherein an interlocking, torque-transmitting connection (4/2 connection and 3/2 connection) is established between the circular spline and the flexspline at two opposing points (two opposing points on 2 connecting to 4) on the flexspline and between the flexspline and the dynamic spline at four positions (any four positions on 3/2 such as any four of the teeth) on either side of the contact with the circular spline (as best understood, see 35 USC 112 rejection), and wherein an axial course (axial course of 2) of the radial position of the tooth transverse of the at least one outer toothing of the flexspline (as best understood, see 35 USC 112 rejection) has a region (2A3/2B; and/or tapered regions of 21/22 on either side of 2A3/2B) which is shifted (as best understood, see 35 USC 112 rejection) radially in the direction of a center axis (CP) of the flat gearing.
Claims 2 and 13. The flat gearing (embodiment of figures 2-13) according to claim 1, wherein a greatest radial shift (2A3, 2B) of the radially reduced region (as best understood, see 35 USC 112 rejection) in the direction of the center axis is located in the region of a plane (plane between 4 and 3 as seen in fig.6) between the circular spline and the dynamic spline.
Claim 3. The flat gearing (embodiment of figures 2-13) according to claim 1, wherein the radially reduced region (as best understood, see 35 USC 112 rejection) is formed symmetrically or asymmetrically with respect to a plane (plane between 4 and 3 as seen in fig.6) between the circular spline and the dynamic spline.
Claims 4 and 14. The flat gearing (embodiment of figures 2-13) according to claim 1, wherein the front section (as best understood, see 35 USC 112 rejection) of the outer toothing of the flexspline shifts (as best understood, see 35 USC 112 rejection) in the direction of the center axis axially from the radially reduced region (as best understood, see 35 USC 112 rejection) on both sides (both sides of 21, 22) in the direction of the front sides in a manner that linearly radially decreases.
Claims 5 and 15. The flat gearing (embodiment of figures 2-13) according to claim 1, wherein the front section of the outer toothing of the flexspline shifts (as best understood, see 35 USC 112 rejection) in the region of one front surface (as best understood, see 35 USC 112 rejection) or both front surfaces (as best understood, see 35 USC 112 rejection) of the flexspline and the axial course of the radial shift assumes a constant value (as best understood, see 35 USC 112 rejection).
Claim 7. The flat gearing (embodiment of figures 2-13) according to claim 1, wherein the axial course of the radial shift (as best understood, see 35 USC 112 rejection) of the front section (as best understood, see 35 USC 112 rejection) of the outer toothing of the flexspline has a concave shape (as best understood, see 35 USC 112 rejection) in the radially reduced region (as best understood, see 35 USC 112 rejection).
Claim 8. The flat gearing (embodiment of figures 2-13) according to claim 1, wherein the front section (as best understood, see 35 USC 112 rejection) of the outer toothing of the flexspline is shifted (as best understood, see 35 USC 112 rejection) in the direction of the center axis in the region of one or both front sides (70, 72) of the flexspline (as best understood, see 35 USC 112 rejection); (See tapering sides of 21 and 22).
Claim 9. The flat gearing (embodiment of figures 2-13) according to claim 1, wherein the flexspline comprises two outer toothings (21, 22) which are separated from one another by a groove (groove between 21, 22).
Claim 10. The flat gearing (embodiment of Fig.1) according to 1, further comprising a roller bearing (roller bearing of WG in fig.1) arranged radially inside the flexspline, wherein the roller bearing has rolling elements (rolling elements of WG in fig.1) configured as balls (balls of WG in fig.1). Note that the figure 1 embodiment discloses all of the claim 1 limitations in a readily apparent manner, e.g., circular spline (R2) having inner toothing (R21), dynamic spline (R1) having inner toothing (R11); flexible flexspline (F) having outer toothing (F1), wave generator (WG), interlocking torque-transmitting connection (F1/R11/R21), axial course (axial course of F1), etc.
Claim 11. The flat gearing (embodiment of figures 2-13) according to claim 1, further comprising a roller bearing (roller bearing of 1) arranged radially inside the flexspline, wherein the rolling elements (rolling elements of 1) configured as rollers or needles (rollers or needles of 1, see 35 USC 112 rejection).
Conclusion
The prior art made of record on the attached PTO-892 and not relied upon above is considered pertinent to applicant's disclosure due general structural similarity thereto.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618
[1] MPEP §1850(II) states: Lack of unity of invention may be directly evident "a priori," that is, before considering the claims in relation to any prior art, or may only become apparent "a posteriori," that is, after taking the prior art into consideration. For example, independent claims to A + X, A + Y, X + Y can be said to lack unity a priori as there is no subject matter common to all claims. In the case of independent claims to A + X and A + Y, unity of invention is present a priori as A is common to both claims. However, if it can be established that A is known, there is lack of unity a posteriori, since A (be it a single feature or a group of features) is not a technical feature that defines a contribution over the prior art.
[2] MPEP §1850(II) states: An international application should relate to only one invention or, if there is more than one invention, the inclusion of those inventions in one international application is only permitted if all inventions are so linked as to form a single general inventive concept (PCT Rule 13.1 ). With respect to a group of inventions claimed in an international application, unity of invention exists only when there is a technical relationship among the claimed inventions involving one or more of the same or corresponding special technical features. The expression "special technical features" is defined in PCT Rule 13.2 as meaning those technical features that define a contribution which each of the inventions, considered as a whole, makes over the prior art. The determination is made on the contents of the claims as interpreted in light of the description and drawings (if any)…Whether or not any particular technical feature makes a "contribution" over the prior art, and therefore constitutes a "special technical feature," should be considered with respect to novelty and inventive step. For example, a document discovered in the international search shows that there is a presumption of lack of novelty or inventive step in a main claim, so that there may be no technical relationship left over the prior art among the claimed inventions involving one or more of the same or corresponding special technical features, leaving two or more dependent claims without a single general inventive concept.
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