DETAILED ACTION
The present application, filed on 05/02/2025, is being examined under the first inventor to file provisions of the AIA .
The following is a Final Office Action on the merits in response to applicant’s filing from 02/04/2026.
Claims 1-17 are pending and have been considered below.
Priority
The application claims priority to provisional application 63/642,008, filed on 05/03/2024. The priority is acknowledged.
Response to Arguments
Applicant's arguments filed 02/04/2026 have been fully considered but they are not persuasive.
Regarding the 112 rejection, changing the words “tunable based on” and “formed by selecting” does not traverse the 112(b) rejection, because the fundamental reason behind the rejection (claiming a design choice decision parameter as part of an apparatus claim is unclear, because modifying a parameter of an apparatus such as choosing a different material involves replacing a first apparatus with a second different apparatus, making it unclear which apparatus is being claimed) remains.
Regarding the 103 rejection of claims 1 and 9, Applicant argues that “a person of ordinary skill would have had no articulated reason to apply Zeid’s mass-damper tuning to Rupp’s thermal band because the mechanisms and goals are different”. Although the mechanisms and goals are different, that does not mean the mechanisms and goals are contradictory; furthermore, the articulated reason for modifying the base reference with Zeid is to show that those of ordinary skill in the art are aware of how to design parts and how experiment/test/tune/select various parameters of vehicle parts, such as material, thickness, width and geometry, in order to optimize the usefulness of that part, such as to “achieve a desired level of vibration damping” {Col. 1, line 28}.
Applicant further argues that several aspects of the invention of Zeid are incompatible with the invention of Rupp (“Zeid’s tuning concerts a shaft-mounted inertial damper suspended on springs and purposely out of contact with the shaft”); however, none of those aspects of Zeid are relied upon in the modification of Rupp, no physical aspect of Zeid is. Zeid is simply modifying Rupp to show that those of ordinary skill in the art are aware of how to design parts and how to experiment/test/tune/select various parameters of vehicle parts, such as material, thickness, width and geometry, in order to optimize the usefulness of that part, such as to “achieve a desired level of vibration damping” {Col. 1, line 28}.
Regarding the 103 rejection of claim 17, the rejection of claim 17 remains for the same reasoning as above regarding the modification of Zeid. Furthermore, Applicant argues, “Feng discloses O-rings on an anti-rotation bushing to restrain rack rotation, not an expansion compensating band on a bearing race.” However, O-rings are elastomeric bands that, due to their elasticity, compensate for expansion. Furthermore, the O-rings {64} of Feng are on an outer race {60} of a bearing {50}. For these three reasons, the rejection of claim 17 under Feng in view of Zeid remains.
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 2-6, and 10-14 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 1 recites the limitation, “the expansion compensating band is formed by selecting at least one parameter of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing”.
Claim 2 recites the limitation "The steering system of claim 1, wherein the at least one parameter is the material of the expansion compensating band”. This limitation is unclear, because it is unclear and indefinite how the expansion compensating band is formed by selecting the material of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing. This would realistically require replacing one part with another part of a different material. Therefore, as best understood from the specification, the claim is directed to a pre-fabricated design choice. As such the limitation discussed above is directed to an intermediary step in the design process, however, these are apparatus claims and the manner of selecting the material of the expansion compensating band is not germane to the patentability of the apparatus.
Claim 3 recites the limitation "The steering system of claim 1, wherein the at least one parameter is the thickness of the expansion compensating band”. This limitation is unclear, because it is unclear and indefinite how the expansion compensating band is formed by selecting the thickness of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing. This would require replacing one part with another part of a different thickness (even if the original part is machined to a different geometry and then put back on, it is a different part with different specifications once machined). Therefore, as best understood from the specification, the claim is directed to a pre-fabricated design choice. As such the limitation discussed above is directed to an intermediary step in the design process, however, these are apparatus claims and the manner of selecting the thickness of the expansion compensating band is not germane to the patentability of the apparatus.
Claim 4 recites the limitation "The steering system of claim 1, wherein the at least one parameter is the width of the expansion compensating band”. This limitation is unclear, because it is unclear and indefinite how the expansion compensating band is formed by selecting the width of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing. This would require replacing one part with another part of a different width (even if the original part is machined to a different geometry and then put back on, it is a different part with different specifications once machined). Therefore, as best understood from the specification, the claim is directed to a pre-fabricated design choice. As such the limitation discussed above is directed to an intermediary step in the design process, however, these are apparatus claims and the manner of selecting the width of the expansion compensating band is not germane to the patentability of the apparatus.
Claim 5 recites the limitation "The steering system of claim 1, wherein the at least one parameter is the geometry of a radially outer surface of the expansion compensating band”. This limitation is unclear, because it is unclear and indefinite how the expansion compensating band is formed by selecting the geometry of a radially outer surface of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing. This would require replacing one part with another (even if the original part is machined to a different geometry and then put back on, it is a different part once machined). Therefore, as best understood from the specification, the claim is directed to a pre-fabricated design choice. As such the limitation discussed above is directed to an intermediary step in the design process, however, these are apparatus claims and the manner of selecting the geometry of a radially outer surface of the expansion compensating band is not germane to the patentability of the apparatus.
Accordingly, claim 6 is rejected by virtue of dependence from claim 5.
Claim 9 recites the limitation, “the expansion compensating band is formed by selecting at least one parameter of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing”.
Claim 10 recites the limitation "The steering system of claim 9, wherein the at least one parameter is the material of the expansion compensating band”. This limitation is unclear, because it is unclear and indefinite how the expansion compensating band is formed by selecting the material of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing. This would realistically require replacing one part with another part of a different material. Therefore, as best understood from the specification, the claim is directed to a pre-fabricated design choice. As such the limitation discussed above is directed to an intermediary step in the design process, however, these are apparatus claims and the manner of selecting the material of the expansion compensating band is not germane to the patentability of the apparatus.
Claim 11 recites the limitation "The steering system of claim 9, wherein the at least one parameter is the thickness of the expansion compensating band”. This limitation is unclear, because it is unclear and indefinite how the expansion compensating band is formed by selecting the thickness of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing. This would require replacing one part with another part of a different thickness (even if the original part is machined to a different geometry and then put back on, it is a different part with different specifications once machined). Therefore, as best understood from the specification, the claim is directed to a pre-fabricated design choice. As such the limitation discussed above is directed to an intermediary step in the design process, however, these are apparatus claims and the manner of selecting the thickness of the expansion compensating band is not germane to the patentability of the apparatus.
Claim 12 recites the limitation "The steering system of claim 9, wherein the at least one parameter is the width of the expansion compensating band”. This limitation is unclear, because it is unclear and indefinite how the expansion compensating band is formed by selecting the width of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing. This would require replacing one part with another part of a different width (even if the original part is machined to a different geometry and then put back on, it is a different part with different specifications once machined). Therefore, as best understood from the specification, the claim is directed to a pre-fabricated design choice. As such the limitation discussed above is directed to an intermediary step in the design process, however, these are apparatus claims and the manner of selecting the width of the expansion compensating band is not germane to the patentability of the apparatus.
Claim 13 recites the limitation "The steering system of claim 9, wherein the at least one parameter is the geometry of a radially outer surface of the expansion compensating band”. This limitation is unclear, because it is unclear and indefinite how the expansion compensating band is formed by selecting the geometry of a radially outer surface of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing. This would require replacing one part with another (even if the original part is machined to a different geometry and then put back on, it is a different part once machined). Therefore, as best understood from the specification, the claim is directed to a pre-fabricated design choice. As such the limitation discussed above is directed to an intermediary step in the design process, however, these are apparatus claims and the manner of selecting the geometry of a radially outer surface of the expansion compensating band is not germane to the patentability of the apparatus.
Accordingly, claim 14 is rejected by virtue of dependence from claim 13.
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 1-6, and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Rupp (WO 2019/086170) in view of Zeid (US 7,862,056).
Regarding claim 1, Rupp discloses a steering system {“steering system” [0052]} comprising: a steering gear assembly {6}; a bearing {12} disposed on a rotating member {11: “The nut 11 of the ball screw drive 8 is rotatable as a result of being mounted in an inner bearing ring 13 of a rotary bearing 12” [0059]} within the steering gear assembly {6}; and an expansion compensating band {30} disposed on an outer race {32} of the bearing {12}.
However, Rupp does not explicitly disclose the expansion compensating band is formed by selecting at least one parameter of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing.
Zeid teaches “A tunable mass damper for use in a vehicle steering system in which a rack and pinion gearing subsystem would otherwise transfer resonant vibrations to the vehicle steering wheel. The mass damper element is a generally cylindrical mass supported and suspended around the shaft extending from the pinion gear by several cantilevered spring elements. The mass damper is tunable by modifying the size of the mass or the size or material or length” (Abstract); and that “efforts… have focused on designing and tuning the elastomeric bushings, bearings, and joints used throughout the steering and suspension systems to achieve a desired level of vibration damping” {Col. 1, lines 25-28}.
In light of these teachings, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the steering system, as disclosed by Rupp, such that the expansion compensating band is formed by selecting at least one parameter of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing, as taught by Zeid, in order to achieve optimal function of a vehicle part, such as to “achieve a desired level of vibration damping” {Col. 1, line 28}, since modifying the mass, size, material or length of the band would inherently change the band’s radial and/or torsional stiffness.
Regarding claim 2, Rupp and Zeid disclose all the aspects of claim 1. Rupp and Zeid further disclose the at least one parameter is the material {Zeid: “material” (Abstract)} of the expansion compensating band {30}.
Regarding claim 3, Rupp and Zeid disclose all the aspects of claim 1. Rupp and Zeid further disclose the at least one parameter is the thickness {Zeid: “size of the mass or size” (Abstract)} of the expansion compensating band {30}.
Regarding claim 4, Rupp and Zeid disclose all the aspects of claim 1. Rupp and Zeid further disclose the at least one parameter is the width {Zeid: “size of the mass or size” (Abstract)} of the expansion compensating band {30}.
Regarding claim 5, Rupp and Zeid disclose all the aspects of claim 1. Rupp and Zeid further disclose the at least one parameter is the geometry {Zeid: “size of the mass or size” (Abstract), changing the size of the structure is changing the geometry of a structure} of a radially outer surface of the expansion compensating band {30} which contacts a surrounding component {21 (Fig. 2)}.
Regarding claim 6, Rupp and Zeid disclose all the aspects of claim 1. Rupp further discloses the surrounding component {21} is an inner wall {21 (Fig. 2)} of a housing {1: “housing 1… first housing component 21” [0064]}.
Regarding claim 9, Rupp discloses a bearing assembly {12} comprising: a housing {1 (21)} having an inner wall {inner wall of 21 (Fig. 2)} to define an interior; a bearing {12} disposed within the interior and having an outer race {32}; an expansion compensating band {30} disposed around the outer race {32}.
However, Rupp does not explicitly disclose the expansion compensating band is formed by selecting at least one parameter of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing.
Zeid teaches “A tunable mass damper for use in a vehicle steering system in which a rack and pinion gearing subsystem would otherwise transfer resonant vibrations to the vehicle steering wheel. The mass damper element is a generally cylindrical mass supported and suspended around the shaft extending from the pinion gear by several cantilevered spring elements. The mass damper is tunable by modifying the size of the mass or the size or material or length” (Abstract); and that “efforts… have focused on designing and tuning the elastomeric bushings, bearings, and joints used throughout the steering and suspension systems to achieve a desired level of vibration damping” {Col. 1, lines 25-28}.
In light of these teachings, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the bearing assembly, as disclosed by Rupp, such that the expansion compensating band is formed by selecting at least one parameter of the expansion compensating band to customize the radial stiffness and/or the torsional stiffness of the bearing, as taught by Zeid, in order to achieve optimal function of a vehicle part, such as to “achieve a desired level of vibration damping” {Col. 1, line 28}, since modifying the mass, size, material or length of the band would inherently change the band’s radial and/or torsional stiffness.
Regarding claim 10, Rupp and Zeid disclose all the aspects of claim 9. Rupp and Zeid further disclose the at least one parameter is the material {Zeid: “material” (Abstract)} of the expansion compensating band {30}.
Regarding claim 11, Rupp and Zeid disclose all the aspects of claim 9. Rupp and Zeid further disclose the at least one parameter is the thickness {Zeid: “size of the mass or size” (Abstract)} of the expansion compensating band {30}.
Regarding claim 12, Rupp and Zeid disclose all the aspects of claim 9. Rupp and Zeid further disclose the at least one parameter is the width {Zeid: “size of the mass or size” (Abstract)} of the expansion compensating band {30}.
Regarding claim 13, Rupp and Zeid disclose all the aspects of claim 9. Rupp and Zeid further disclose the at least one parameter is the geometry {Zeid: “size of the mass or size” (Abstract), changing the size of the structure is changing the geometry of a structure} of a radially outer surface of the expansion compensating band {30} which contacts a surrounding component {21 (Fig. 2)}.
Regarding claim 14, Rupp and Zeid disclose all the aspects of claim 13. Rupp further discloses the surrounding component {21} is an inner wall {21 (Fig. 2)} of a housing {1: “housing 1… first housing component 21” [0064]}.
Claims 7-8, and 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Rupp and Zeid, and further in view of Feng (US 2023/0213064).
Regarding claim 7, Rupp and Zeid disclose all the aspects of claim 1. Rupp further discloses the expansion compensating band {30} is a first expansion compensating band {30}.
However, Rupp does not explicitly disclose the steering system further comprising a second expansion compensating band.
Feng teaches a steering system {20} comprising a first expansion compensating band {64} and second expansion compensating band {64: “At least one O-ring 64 is provided on the radially outer surface 60. As shown, two or more O-rings 64 may be provided in some embodiments. Regardless of the precise number of O-rings 64, the O-rings 64 provide a delashing effect on the anti-rotation bushing 50” [0016]}.
In light of these teachings, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the bearing assembly, as disclosed by Rupp and Zeid, such that the steering system further comprises a second expansion compensating band, as taught by Feng, in order to “provide a delashing effect on the anti-rotation bushing 50” [0016].
Regarding claim 8, Rupp, Zeid, and Feng disclose all the aspects of claim 7. Rupp, Zeid, and Feng further disclose the at least one parameter is the spacing {Zeid: “size of the mass or size” (Abstract), since modifying the size or mass of each expansion band would adjust the spacing between them (ex. as the bands get larger the spacing between them would decrease, as the bands get smaller the spacing between them would increase)} between the first expansion compensating band and the second expansion compensation band {Feng: 64}.
Regarding claim 15, Rupp and Zeid disclose all the aspects of claim 9. Rupp further discloses the expansion compensating band {30} is a first expansion compensating band {30}.
However, Rupp does not explicitly disclose the bearing assembly further comprising a second expansion compensating band.
Feng teaches {Fig. 2} a bearing assembly {50} comprising a first expansion compensating band {64} and second expansion compensating band {64: “At least one O-ring 64 is provided on the radially outer surface 60. As shown, two or more O-rings 64 may be provided in some embodiments. Regardless of the precise number of O-rings 64, the O-rings 64 provide a delashing effect on the anti-rotation bushing 50” [0016]}.
In light of these teachings, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified the bearing assembly, as disclosed by Rupp and Zeid, to include a second expansion compensating band, as taught by Feng, in order to “provide a delashing effect on the anti-rotation bushing 50” [0016].
Regarding claim 16, Rupp, Zeid, and Feng disclose all the aspects of claim 15. Rupp, Zeid, and Feng further disclose the at least one parameter is the spacing {Zeid: “size of the mass or size” (Abstract), since modifying the size or mass of each expansion band would adjust the spacing between them (ex. as the bands get larger the spacing between them would decrease, as the bands get smaller the spacing between them would increase)} between the first expansion compensating band and the second expansion compensation band {Feng: 64}.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Feng in view of Zeid.
Regarding claim 17, Feng discloses a bearing assembly {50} for an expansion compensating band {64} comprising a material, a thickness, a width, and a geometry of a radially outer surface {outer surface of 64} of the expansion compensating band {64} which contacts a surrounding component {rack housing: “The anti-rotation bushing 50 is positioned within the rack housing” [0014]}, and a spacing between the expansion compensating band {64} and an adjacent expansion compensating band {64 (Fig. 2)}; and securing the expansion compensating band {64} to an outer race {60} of a bearing {50}.
Zeid teaches “A tunable mass damper for use in a vehicle steering system in which a rack and pinion gearing subsystem would otherwise transfer resonant vibrations to the vehicle steering wheel. The mass damper element is a generally cylindrical mass supported and suspended around the shaft extending from the pinion gear by several cantilevered spring elements. The mass damper is tunable by modifying the size of the mass or the size or material or length” (Abstract); and that “efforts… have focused on designing and tuning the elastomeric bushings, bearings, and joints used throughout the steering and suspension systems to achieve a desired level of vibration damping” {Col. 1, lines 25-28}.
In light of these teachings, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have modified Feng, to provide a method of customizing the radial stiffness and/or torsional stiffness of a bearing assembly comprising: selecting from a plurality of tunable parameters for an expansion compensating band, wherein the plurality of tunable parameters is at least one of a material, a thickness, a width, a geometry of a radially outer surface of the expansion compensating band which contacts a surrounding component, and a spacing between the expansion compensating band and an adjacent expansion compensating band; and securing the expansion compensating band to an outer race of a bearing, as taught by Zeid, in order to “achieve a desired level of vibration damping” {Col. 1, line 28}, since modifying the mass, size, material or length of the band would inherently change the band’s radial /or torsional stiffness. Furthermore, it would have been obvious to choose a material, width, thickness, and spacing that works within the given assembly, and it would have been obvious to choose a material, width, thickness, and spacing that fits within the given assembly. Lastly, customizing the radial stiffness and torsional stiffness is intended use, and any change in the material and size of the band would result in different radial and torsional stiffness. In reality, the claim only has two steps: picking a band (of a given material and size and shape) and then fitting it on a bearing. Therefore, it would have been obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to have arrived at the invention of claim 17 in view of Feng and Zeid.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel M Keck whose telephone number is (571)272-5947. The examiner can normally be reached Mon - Fri 8:00-4:00.
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 on (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.
/Daniel M. Keck/Patent Examiner, Art Unit 3614
/JASON D SHANSKE/Supervisory Patent Examiner, Art Unit 3614