DETAILED CORRESPONDENCE
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 .
Status of Claims
This Final Office Action is in response to the amendment filed on July 28th, 2026 for application no. 19/257,589 filed on July 2nd, 2025. Claims 1-14 are pending. In the present amendment, claim 5 is amended.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is: “mediation member” in claim 13.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recites sufficient structure to perform the claimed function so as to avoid it being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Regarding Claims 13-14, the recited term “mediation member” is interpreted as “The mediation member 59 is generally a disk” as disclosed by Applicant [0032].
Claim Objections
Regarding Claim 5, please change the recitation of “the splines or keyways of the first drum and the splines or keyways of the second drum overlap with each other in a radial direction” to - - the spline or the keyway coupling of the first drum is one of a plurality of splines or keyways of the first drum and the spline or the keyway coupling of the second drum is one of a plurality of splines or keyways of the second drum overlap with each other in a radial direction - - to correct minor informalities regarding antecedent basis.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(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 1-4 and 7-13 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Cheng (US 2025/0144998).
Regarding Claim 1, Cheng teaches a sub-assembly (see Figs. 6 and 9) for limiting differential motion to an electric axle (eAxle) (“front differential assembly” 132) with a differential (“differential” 6) configured to differentially output torque about an axis (“axis” 66), comprising:
an actuator (684; [0043] – “A solenoid 684 (shown only in FIGS. 2, 6 and 13) or motor is used against a peripheral extension 685 (shown only in FIG. 4) of the tray 681 to rotate the tray 681 up to about 100° about the differential transverse axis 66” emphasis added) configured to generate a rotational force about the axis (66);
a cam mechanism (“clutch engagement apparatus” 68) configured to convert the rotational force into a thrust force in a direction of the axis (66; to the right in Figs. 6 and 9);
a clutch assembly (“clutch” 67) including a first drum (“outer ring” 671) drivingly engaged by a spline or keyway (“splines” 675) coupling with a differential case (“inner housing” 622) of the differential (6) and a second drum (“inner ring” 672) drivingly engaged by a spline or keyway (“splines” 676) coupling with a side gear (“left semi-axle gear” 641) of the differential (6), and
a friction clutch (“interleaved friction plates” 673) arranged between the first drum (671) and the second drum (672),
the clutch assembly (67) being disposed adjacent to the cam mechanism (68) so as to receive the thrust force to bring the friction clutch (673) into action; and
a cover (“left sidewall” 651) configured to enclose the cam mechanism (68) and the clutch assembly (67) and to combine with the eAxle (132) to support any one of the cam mechanism (68) and the clutch assembly (67) against the thrust force or a thrust reaction force (see Figs. 6 and 9).
Regarding Claim 2, Cheng teaches the sub-assembly of claim 1,
wherein the actuator (Fig. 6, 684; see [0043] passage above) is coupled with the cam mechanism (68) to transmit the rotational force (see Fig. 6).
Regarding Claim 3, Cheng teaches the sub-assembly of claim 1,
wherein the cam mechanism (Figs. 6 and 9; 68) is interposed between the clutch assembly (67) and one (651) of the cover (651) and the differential (6).
Regarding Claim 4, Cheng teaches the sub-assembly of claim 1,
wherein the friction clutch (Fig. 9; 673) is a multi-plate clutch (see Fig. 9) including first clutch plates (673) engaged with the first drum (671) and second clutch plates (673) engaged with the second drum (672) and stacked alternately with the first clutch plates (673; see Fig. 9; [0040] – “The interleaved friction plates 673 include one or more friction plates which are toothed to rotate with the inner ring 672 alternating between one or more friction plates which are toothed to rotate with the outer ring 671”).
Regarding Claim 7, Cheng teaches the sub-assembly of claim 2,
wherein the actuator (Fig. 6, 684) is fixed to the cover (651).
Regarding Claim 8, Cheng teaches the sub-assembly of claim 1,
wherein the friction clutch (Figs. 6 and 9; 673) is configured to brake the differential motion between the first drum (671) and the second drum (672; [0041] – “clutch 67 can also be fully engaged by reducing spacing/increasing pressure of the interleaved friction plates 673 sufficiently that there is no slippage, thereby fixing the outer ring 671 and the inner ring 672 to rotate about the transverse differential axis 66 together at the same rotational speed. In the preferred embodiment, the fully engaged clutch 67 creates the fully locked state of the front differential 6 with no further locking mechanism” emphasis added).
Regarding Claim 9, Cheng teaches the sub-assembly of claim 1,
wherein the cam mechanism (Fig. 9; 68) includes a base member (portion of 651 for receiving “balls” 683) and a thrust member (“tray” 681),
the thrust member (681) being moveable along the axis (66) and the base member (portion of 651 for receiving “balls” 683) being immovable along the axis (66; [0043] – “In one preferred embodiment, engagement of the clutch 67 is accomplished mechanically with a clutch engagement apparatus 68. The clutch engagement apparatus 68 includes a tray 681 providing ramped raceways 682 for a plurality of balls 683 allowing the balls 683 to roll therein. Along a circumferential direction of the tray 681, the depth of the depression of the ramp raceway 682 for each ball 683 (with depth measured along the direction of the differential transverse axis 66) increases gradually from small to large. The preferred embodiment uses six balls 683 in rolling contact with the left sidewall 651 of the differential housing 65. A solenoid 684 (shown only in FIGS. 2, 6 and 13) or motor is used against a peripheral extension 685 (shown only in FIG. 4) of the tray 681 to rotate the tray 681 up to about 100° about the differential transverse axis 66. As rotation of the ramp raceways 682 increases, the balls 683 each roll from a region with a large depression depth to a region with a small depression depth on their ramp raceways 682, such that the position of the tray 681 shifts rightwardly toward the clutch 67, so as to push the tray 681 to press against the interleaved friction plates 673. If desired, a spring (not shown) can be added to automatically reset, returning the tray 681 and its ramp raceways 682 to the fully unlocked position whenever the solenoid 684 is not energized”).
Regarding Claim 10, Cheng teaches the sub-assembly of claim 9,
wherein the thrust member (Figs. 6 and 9; 681) is coupled with the actuator (684) and is rotatable about the axis (66; see [0043] above).
Regarding Claim 11, Cheng teaches the sub-assembly of claim 1,
wherein the friction clutch (Figs. 6 and 9; 673) is radially aligned with the cam mechanism (68).
Regarding Claim 12, Cheng teaches the sub-assembly of claim 1,
wherein the friction clutch (Figs. 6 and 9; 673) is radially offset relative to the cam mechanism (68).
Regarding Claim 13, Cheng teaches the sub-assembly of claim 1,
further comprising a mediation member (Figs. 6 and 9; “annular slide bearing” 686) arranged between the cam mechanism (68) and the second drum (672),
the mediation member (686) configured to transfer the thrust force from the cam mechanism (68) to the friction clutch (673).
Response to Arguments
The Applicant's arguments filed July 28th, 2026 are in response to the Office Action mailed April 28th, 2026. The Applicant's arguments have been fully considered.
Response to Claim Interpretation under 112(f)
Regarding Claim 13, Applicant’s argument that “Claims 13-14 are being interpreted under 35 U.S.C. §112(f), sixth paragraph, for reciting the term "mediation member". Applicant notes that, even if this interpretation is correct, with which Applicant does not agree, all structures described with the mediation member should be included in any such interpretation. While the mediation member is described as generally a disk, as noted in the Office Action, the application as filed also provides, by way of a non-limiting example, that the mediate disk can be elongated radially outward, and may have faces arranged, for example, as set forth in paragraph 0033. Nevertheless, Applicant believes that the mediation member is described with sufficient structural reference in claim 13 and 14 such that the 112(f) interpretation is not correct” (p. 4) is not persuasive as it is generally unclear what aspect of the three-prong analysis outlined in MPEP 2181 Applicant is traversing. As seen in Fig. 5, the mediation member (59) is not structurally associated with any of the structural features recited in claims 1 and 13. That said, Applicant is correct that the mediation member can also interpreted as elongated radially outward and may have faces arranged thereon as disclosed at paragraph [0033] of the Applicant’s specification. See Claim Interpretation above.
Response to Claim Rejections - 35 USC § 112
Regarding Claim 5, Applicant’s amendment has clarified the invention. As such, the 112(b) rejection indicated in the previous Office Action is withdrawn.
Response to Claim Rejections - 35 USC § 102 and/or 103
Regarding Claim 1, Applicant’s argument that “Claim 1 recites a "sub-assembly" having an actuator, a cam mechanism a clutch mechanism and a cover. Nothing in Cheng's device meets the claimed "subassembly" because all the related components, such as the solenoid 684, the clutch engagement apparatus 68, and the clutch 67, are not designed as a separate unit from an electric axle with a differential but are instead inseparable components of the front differential 6. A sub-assembly, by its everyday, common meaning is "an assembled unit designed to be incorporated with other units in a finished product"” (p. 4-5) is not persuasive as the recitation of a “sub-assembly” does not distinguish from the features disclosed by Cheng. Cheng clearly teaches a sub-assembly (see Figs. 6 and 9) comprising an actuator (684), a cam mechanism (68), a clutch assembly (67), a friction clutch (673) and a cover (651) as required by claim 1. Examiner would encourage Applicant to recite structural differences between the sub-assembly disclosed by Cheng and the sub-assembly disclosed by Applicant. See detailed and relevant rejections presented above.
Regarding Claim 1, Applicant’s argument that “Moreover, Cheng does not teach or suggest the claimed "cover configured to enclose the cam mechanism and the clutch assembly and to combine with the eAxle to support any one of the cam mechanism and the clutch assembly against the thrust force or a thrust reaction force Any single "cover" in Cheng does not enclose all these elements as in claim 1. In addition, Cheng explicitly states in the paragraph 0049 that "Some part of the clutch 67 presses against either the outer race 694 or more preferably the inner race 693 to establish the axial position of the clutch 67 and to withstand the axial force placed on the friction plates 673." The bearing 69 is necessary to bear the thrust force or the thrust reaction force acting on both the clutch engagement apparatus 68 and the clutch 67. This structure does not meet "a cover...to support any one of the cam mechanism and the clutch assembly against the thrust force or a thrust reaction force"” (p. 5) is not persuasive. As seen in Figs. 4, 6 and 10 of Cheng, the cover (651) clearly encloses the cam mechanism (68) and the clutch assembly (67) to support both the cam mechanism (68) and the clutch assembly (67) against thrust forces developed inside the eAxle in a substantially similar manner as the cover disclosed by Applicant. Therefore, Cheng teaches “a cover configured to enclose the cam mechanism and the clutch assembly and to combine with the eAxle to support any one of the cam mechanism and the clutch assembly against the thrust force or a thrust reaction force” as required by claim 1. Applicant’s suggestion that direct contact between the cover and one of the cam mechanism and the clutch assembly is incorrect and is not currently required by claim 1. See detailed and relevant rejections presented above.
In conclusion, amended claims 1-4 and 7-13 are rejected. See detailed and relevant rejections set forth above. Amended claims 5-6 and 14 are objected to as being dependent upon rejected base claim 1. See allowable subject matter set forth below.
Allowable Subject Matter
Claims 5-6 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Reasons for allowance, if applicable, will be the subject of a separate communication to the Applicant or patent owner, pursuant to 37 CFR § 1.104 and MPEP § 1302.14.
As allowable subject matter has been indicated, Applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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 James J. Taylor II whose telephone number is (571)272-4074. The examiner can normally be reached M-F, 9:00 am - 5:00 pm EST.
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, Ernesto Suarez can be reached at 571-270-5565. 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.
JAMES J. TAYLOR II
Primary Examiner
Art Unit 3655
/JAMES J TAYLOR II/Primary Examiner, Art Unit 3655
Prosecution Insights