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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a), which states "The drawings must show every feature of the invention specified in the claims".
Therefore, the claim 3 limitations “a first removal tap formed between the externally toothed gear and the first flange” and “a second removal tap formed between the internally toothed gear and the second flange” must be shown or the features canceled from the claims. See also the 35 USC 112(b) clarity rejection of claim 3 elsewhere below. Since the above noted features appear to be critical to invention novelty, a detailed illustration is essential for a proper understanding of the invention. Accordingly, a mere graphical symbol or labeled representation is not acceptable.1
No new matter should be entered.
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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(a)
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 1-4 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
Applicant’s claim 1 recites “radial-direction fastening strength between the externally toothed gear and the first flange as provided by the first fastening bolts being set to be at least the same as radial-direction fastening strength between the internally toothed gear and the second flange as provided by the second fastening bolts”. This limitation is not supported by a reduction to practice, drawings or written description of a sufficient number of species to establish possession of the full broad scope of the claimed genus. Note that the accepted meaning of the term “strength” refers to a particular material’s ability to withstand an applied load or stress before permanent deformation or failure. Applicant’s disclosure fails to identify what types of strength were envisioned by the inventor (e.g., Tensile Strength, Yield Strength, Fatigue Strength, etc.) and further fails to set forth any particular materials for any particular elements that might achieve the claimed relative strengths. Accordingly, applicant does not appear to have had possession of invention as claimed.
See MPEP 2163, which states in various parts:
“A question as to whether a specification provides an adequate written description may arise in the context of an original claim which is not described sufficiently
“However, as discussed in paragraph I., supra, the issue of a lack of adequate written description may arise even for an original claim when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention. The claimed invention as a whole may not be adequately described if the claims require an essential or critical feature which is not adequately described in the specification and which is not conventional in the art or known to one of ordinary skill in the art.”
“A lack of adequate written description issue also arises if the knowledge and level of skill in the art would not permit one skilled in the art to immediately envisage the product claimed from the disclosed process.”
See MPEP 2163(II)(A)(3)(a)(ii), which states in various parts:
“The written description requirement for a claimed genus may be satisfied through sufficient description of a representative number of species by actual reduction to practice… reduction to drawings… or by disclosure of relevant, identifying characteristics… sufficient to show the inventor was in possession of the claimed genus…”
“[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention…”
“[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification…”
“A ‘representative number of species’ means that the species which are adequately described are representative of the entire genus. Thus, when there is substantial variation within the genus, one must describe a sufficient variety of species to reflect the variation within the genus…”
“A patentee will not be deemed to have invented species sufficient to constitute the genus by virtue of having disclosed a single species when… the evidence indicates ordinary artisans could not predict the operability in the invention of any species other than the one disclosed… Claims directed to PTFE dental floss with a friction-enhancing coating were not supported by a disclosure of a microcrystalline wax coating where there was no evidence in the disclosure or anywhere else in the record showing applicant conveyed that any other coating was suitable for a PTFE dental floss…”
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 merely by clearly describing one embodiment of the thing claimed… The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed…”
Claim Rejections - 35 USC § 112(b)
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 1-4 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 claims are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors. For instance, claim 1 recites the term “characterized”, which is commonly used in PCT applications or under Jepson format to set forth admitted prior art of another. However, none of the figures are labeled as being “admitted prior art” nor does the written description expressly set forth any “admitted prior art” of another such that it is unclear what, if anything, in the claims applicant intends to be admitted prior art or not.
See MPEP 1824 [R-08.2012], which states “
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PCT Rule 6.3. Manner of Claiming(ii) a characterizing portion - preceded by the words “characterized in that,” “characterized by,” “wherein the improvement comprises,” or any other words to the same effect - stating concisely the technical features which, in combination with the features stated under (i), it is desired to protect.”
MPEP 2129 III, which states “
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Drafting a claim in Jepson format (i.e., the format described in 37 CFR 1.75(e); see MPEP § 608.01(m)) is taken as an implied admission that the subject mater of the preamble is the prior art work of another. In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 534 (CCPA 1982) (holding preamble of Jepson-type claim to be admitted prior art where applicant’s specification credited another as the inventor of the subject matter of the preamble). However, this implication may be overcome where applicant gives another credible reason for drafting the claim in Jepson format. In re Ehrreich, 590 F.2d 902, 909-910, 200 USPQ 504, 510 (CCPA 1979) (holding preamble not to be admitted prior art where applicant explained that the Jepson format was used to avoid a double patenting rejection in a co-pending application and the examiner cited no art showing the subject matter of the preamble). Moreover, where the preamble of a Jepson claim describes applicant’s own work, such may not be used against the claims. Reading & Bates Construction Co. v. Baker Energy Resources Corp., 748 F.2d 645, 650, 223 USPQ 1168, 1172 (Fed. Cir. 1984); Ehrreich, 590 F.2d at 909-910, 200 USPQ at 510.
See 37 CFR 1.75 (e), which states “Where the nature of the case admits, as in the case of an improvement, any independent claim should contain in the following order: (1) A preamble comprising a general description of all the elements or steps of the claimed combination which are conventional or known, (2) A phrase such as “wherein the improvement comprises,” and (3) Those elements, steps, and/or relationships which constitute that portion of the claimed combination which the applicant considers as the new or improved portion.
Claim 1 recites “a first shaft part of the input shaft extending from the wave generator to one side in an axial direction” without expressly stating what element defines the “one side” such that the claim is unclear, i.e., one side of what element?
Claim 1 recites “a second shaft part of the input shaft extending from the wave generator to the other side in the axial direction” which lacks proper antecedent basis for “the other side” and fails to expressly state what element defines the “other side”, thereby rendering the claim unclear, i.e., the other side of what element?
Claim 1 recites “the wave generator being attached to the input shaft without a coupling” which is unclear as to how the generator can be both “attached” and “without a coupling” since attachment of parts requires coupling of parts. Applicant’s figures show the generator and input shaft to be both attached and coupled in direct contradiction to the claim language.
See MPEP 2173.03, which states that a claim may be "indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty."
Claim 1 recites “a radial-direction distance from a rotation center to fastening positions of the first fastening bolts” without expressly stating what element defines the “rotational center”, i.e., rotational center of what element?
Claim 1 unclearly recites “radial-direction fastening strength between the externally toothed gear and the first flange as provided by the first fastening bolts being set to be at least the same as radial-direction fastening strength between the internally toothed gear and the second flange as provided by the second fastening bolts”. The accepted meaning of the term “strength” refers to a particular material’s ability to withstand an applied load or stress before permanent deformation or failure (e.g., Tensile Strength, Yield Strength, Fatigue Strength, etc.) Applicant’s claims fail to set forth what type of strength is to limit the claim and moreover fails to clearly point out what element is to define such material strength. Note that applicant’s figures fail to show any element “between the externally toothed gear and the first flange” or “between the internally toothed gear and the second flange”. Further, even if there were a clearly disclosed element between these claimed elements it would be unclear as to how the material property strength of such element can be “provided by the second fastening bolts”. Applicant may have in mind an applied force or torque rather than the material property of strength. Still further, it is unclear how the strength of one element is to be “set” relative to another since the material strength would be an inherent property (e.g., a steel element will inherently have a higher yield strength than an aluminum element regardless of where one sets/places/arranges the elements relative to one another).
Claim 2 recites “a first fitting part formed between the externally toothed gear and the first flange” and “a second fitting part formed between the internally toothed gear and the second flange”, which is contrary to the figures which fail to show any parts “between” the elements as claimed. Rather, it appears that parts (13, 14) are parts of the flanges that are radially outside of the toothed gears. Again, see MPEP 2173.03 as quoted previously above.
Claim 3 recites “a first removal tap formed between the externally toothed gear and the first flange” and “a second removal tap formed between the internally toothed gear and the second flange”, which is contrary to the figures which show no tap to be located “between” the elements as claimed. Again, see MPEP 2173.03 as quoted previously above.
Claim 4 depends from claim 1 and is 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 1-3 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Asawa US 5775178.
Claim 1 (as best understood, see 35 USC 112 rejections). A strain wave gearing (fig.1) comprising: a rigid internally toothed gear (5); a flexible externally toothed gear (6) coaxially disposed inside the internally toothed gear; a wave generator (7) coaxially disposed inside the externally toothed gear; an input shaft (4) coaxially attached to the wave generator; a first flange (3) that rotatably supports, via a first support bearing (32), a first shaft part (left part of 4) of the input shaft extending from the wave generator to one side (left side) in an axial direction; a second flange (2) that rotatably supports, via a second support bearing (22), a second shaft part (right part of 4) of the input shaft extending from the wave generator to the other side (right side) in the axial direction; a plurality of first fastening bolts (10) that fasten and fix the externally toothed gear to the first flange; and a plurality of second fastening bolts (13) that fasten and fix the internally toothed gear to the second flange, the wave generator being attached to the input shaft without a coupling (see 35 USC 112 rejection), the strain wave gearing being characterized in that: a radial-direction distance (distance from 1a to 10) from a rotation center (1a) to fastening positions (positions of 10) of the first fastening bolts being greater than a radial-direction distance (distance from 1a to 13,) from the rotation center to fastening positions (positions of 13) of the second fastening bolts; and radial-direction fastening strength between the externally toothed gear and the first flange as provided by the first fastening bolts being set to be at least the same as radial-direction fastening strength between the internally toothed gear and the second flange as provided by the second fastening bolts. The prior art structures bolded above are presumed to inherently present the claimed properties/functions italicized above (as best as they are understood, noting the 35 USC 112 rejections), thus presenting a prima facie case and properly shifting the burden to applicant to obtain/test the prior art and provide evidence to the contrary in accordance with MPEP §2112.01(I) and 2114.
Claim 2 (as best understood, see 35 USC 112 rejections). The strain wave gearing according to claim 1, further comprising: a first fitting part (radially outermost part of 3 ) formed between the externally toothed gear and the first flange (see 35 USC 112 rejection), in which the externally toothed gear is fitted and fixed to the first flange, or vice versa, along the axial direction in a transition fit state (where the radially outermost surface of 6/64 fits to and within 3); and a second fitting part (radially outermost part of 2) formed between the internally toothed gear and the second flange (see 35 USC 112 rejection), in which the internally toothed gear is fitted and fixed to the second flange, or vice versa, along the axial direction in a transition fit state (wherein the radially outermost surface of 5 fits to and within 2)
Claim 3 (as best understood, see 35 USC 112 rejections). The strain wave gearing according to claim 2, further comprising: a first removal tap (11) formed between (see 35 USC 112 rejection) the externally toothed gear and the first flange; and a second removal tap (14) formed between (see 35 USC 112 rejection) the internally toothed gear and the second flange.
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 of this title, 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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Asawa US 5775178 in view of Kubo US2013/0072345.
Asawa does not disclose that the flanges and gears are positioned/fixed together by press-fit pins. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Asawa such that at least one first press-fit pin is press-fitted into the externally toothed gear and the first flange along the axial direction so that the externally toothed gear and the first flange are positioned and fixed together; and at least one second press-fit pin is press-fitted into the internally toothed gear and the second flange along the axial direction so that the internally toothed gear and the second flange are positioned and fixed together, since such was known to be desirable in the art (see Kubo, press-fit pin 60, flange 12 and gear 25) and one of ordinary skill would see such additional fasteners to better prevent unwanted disassembly than without.
Conclusion
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 See 37 CFR 1.83 which states: "(a) The drawing in a nonprovisional application must show every feature of the invention specified in the claims. However, conventional features disclosed in the description and claims, where their detailed illustration is not essential for a proper understanding of the invention, should be illustrated in the drawing in the form of a graphical drawing symbol or a labeled representation (e.g., a labeled rectangular box). In addition, tables that are included in the specification and sequences that are included in sequence listings should not be duplicated in the drawings. (b) When the invention consists of an improvement on an old machine the drawing must when possible exhibit, in one or more views, the improved portion itself, disconnected from the old structure, and also in another view, so much only of the old structure as will suffice to show the connection of the invention therewith. (c) Where the drawings in a nonprovisional application do not comply with the requirements of paragraphs (a) and (b) of this section, the examiner shall require such additional illustration within a time period of not less than two months from the date of the sending of a notice thereof."
