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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 30 December 2025 has been entered.
Claim Rejections - 35 USC § 112
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 3, 5-6 and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 11 recites “in a fatigue test for measuring a fatigue resistance surface pressure that represents strength against fatigue that is generated when a cyclic load is applied to the resin coating layer: (a) under conditions where a tester is a reciprocating load tester, a rotation speed of the reciprocating load tester is 3000 rpm, a number of cycles of applying a load is 105, a lubricating oil supply temperature representing a test temperature is 100 °C, a mating member of the sliding member is S45C, and the lubricating oil is engine oil; and (b) a maximum surface pressure in a state where the fatigue did not occur in the resin coating layer is defined as the fatigue resistance surface pressure, the fatigue surface pressure of the resin coating layer is 110 MPa or more”. Regarding the limitation, there are only two possibilities in interpreting the claim: either a.) any resin layer that has all the limitations and properties as those recited prior to the limitation inherently perform in the way described by the limitation or b.) Applicant has failed to disclose the distinguishing feature that allows the resin layer of the invention to perform differently than another resin layer having all the previously recited limitations and properties as those recited prior to the limitation. Assuming possibility b), Applicant has failed to describe how to make the invention since Applicant has not disclose what feature or element provides for the limitation. For the purpose of examination, it is assumed that possibility a) is the correct option. See the 112(b) rejection below.
Claim 11 recites “in a fatigue test for measuring a fatigue resistance surface pressure that represents strength against fatigue that is generated when a cyclic load is applied to the resin coating layer: (a) under conditions where a tester is a reciprocating load tester, a rotation speed of the reciprocating load tester is 3000 rpm, a number of cycles of applying a load is 105, a lubricating oil supply temperature representing a test temperature is 100 °C, a mating member of the sliding member is S45C, and the lubricating oil is engine oil; and (b) a maximum surface pressure in a state where the fatigue did not occur in the resin coating layer is defined as the fatigue resistance surface pressure, the fatigue surface pressure of the resin coating layer is 110 MPa or more”. The limitation is considered unlimited functional language. MPEP §2173.05(g) states “Unlimited functional claim limitations that extend to all means or methods of resolving a problem may not be adequately supported by the written description or may not be commensurate in scope with the enabling disclosure, both of which are required by 35 U.S.C. 112(a) and pre-AIA 35 U.S.C. 112, first paragraph. In re Hyatt, 708 F.2d 712, 714, 218 USPQ 195, 197 (Fed. Cir. 1983); Ariad, 598 F.3d at 1340, 94 USPQ2d at 1167.” If Applicant’s assertion is that the limitation further limits the claim, then Applicant has merely recited a function (how the material performs in a specific test), without providing which features or structure allow for the material to perform that function.
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 3, 5-6 and 11 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 11 recites “a reciprocating load tester”, “a mating member of the sliding member is S45C” and “an engine oil” which are outside the state scope of the claim (a sliding member). Thus, the scope of the claims is unclear.
Claim 11 recites “in a fatigue test for measuring a fatigue resistance surface pressure that represents strength against fatigue that is generated when a cyclic load is applied to the resin coating layer: (a) under conditions where a tester is a reciprocating load tester, a rotation speed of the reciprocating load tester is 3000 rpm, a number of cycles of applying a load is 105, a lubricating oil supply temperature representing a test temperature is 100 °C, a mating member of the sliding member is S45C, and the lubricating oil is engine oil; and (b) a maximum surface pressure in a state where the fatigue did not occur in the resin coating layer is defined as the fatigue resistance surface pressure, the fatigue surface pressure of the resin coating layer is 110 MPa or more”. For the purposes of examination, there are only two possibilities regarding the claim limitation: either a.) any resin layer that has all the recited features of the claim inherently perform in the way described in the claim or b.) Applicant has failed to disclose the distinguishing feature that allows the resin layer of the invention to perform differently than another resin layer having all the same properties as those recited in the claim. As such, for examination, the examiner has assumed possibility a.) any resin layer that has all the recited features of the claim inherently perform in the way described in the claim.
Claim 11 recites “in a fatigue test for measuring a fatigue resistance surface pressure that represents strength against fatigue that is generated when a cyclic load is applied to the resin coating layer: (a) under conditions where a tester is a reciprocating load tester, a rotation speed of the reciprocating load tester is 3000 rpm, a number of cycles of applying a load is 105, a lubricating oil supply temperature representing a test temperature is 100 °C, a mating member of the sliding member is S45C, and the lubricating oil is engine oil; and (b) a maximum surface pressure in a state where the fatigue did not occur in the resin coating layer is defined as the fatigue resistance surface pressure, the fatigue surface pressure of the resin coating layer is 110 MPa or more”. It is unclear how this further limits the claim in any meaningful way. Applicant has merely laid out a test procedure for testing a resin layer. Still further, it is unclear based on the claim, if every sliding member has such a test performed on the resin layer. Put another way, if a sliding member has all the same structural elements and materials as required by the claim but the resin layer of that same sliding member is not subjected to the fatigue test, is the sliding member considered to be covered by the claim? It is improper to claim a testing process of a material in an apparatus claim. The scope of the invention is a sliding member, not a method of testing a resin layer. As noted in the paragraph above, it is assumed that if all the structural and compositional limitations of the resin layer are met, then the resin layer must also inherently be capable of performing the same in the fatigue test.
Claim 11 recites “a fatigue resistance” in line 29, “a fatigue resistance surface pressure” in line 21, “the fatigue resistance surface pressure” in line 31 and “the fatigue surface pressure” in line 33. It is unclear if these are all the same feature/measurement or if they are separate features/measurements.
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 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai JP 2018-193519 in view of Yoshida U.S. 2015/0307800 and Matsuhisa U.S. 2013/0023451.
Re clm 11, Kawai discloses sliding member (Fig. 1) comprising: a base (11) shaped to have a surface that supports a mating member (any shape can support a correspondingly shaped member), the surface of the base being free of a metal sintered layer ([0028]) and a resin coating layer (13) formed on the surface, the resin coating layer comprises more than or equal to 80 vol% of a binder resin ([0016]), the binder resin including polyimide resin ([0016]) having a tensile strength greater than or equal to 150 MPa ([0016]), an additive dispersed in the binder resin, the additive ([0017]) including graphite ([0017]), clay ([0009]), and a silane coupling agent ([0017]), wherein a content of the silane coupling agent is more than or equal to 0.2 wt% and less than or equal to 5 wt% relative to the polyimide resin ([0018]), a content of the graphite is more than or equal to 9 vol% and less than or equal to 18 vol% ([0018]), a content of the clay is more than or equal to 0.5 vol% and less than or equal to 3% ([0018]), and a content of the additive is less than or equal to 20 vol% ([0010]; if resin must be 85%, only 15% can be left for additives).
Kawai does not disclose the thickness of the resin layer and does not disclose the resin coating layer is greater than 100 µm.
Yoshida teaches a resin layer thickness as a result effect variable, since a layer having an excessively small thickness is unfavorable because protrusions of the base appear on the surface layer, while on the other hand, an excessively large thickness leads to heat generated on the surface not easily conducted to the base resulting in insufficient wear resistance ([0025]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kawai and provide the thickness of the resin layer and does not disclose the resin coating layer is greater than 100 µm, since it has been held that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05(II)(A).
Kawai does not disclose a surface roughness of the surface of the base is 20 to 60 pm RzJIS.
Matsuhisa teaches a base member with a surface roughness of 20 to 60 µm RzJIS ([0046] and [0047]) for the purpose of improving the anchoring effect between the resin and the base ([0047]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Kawai and provide a surface roughness of the surface of the base is 20 to 60 pm RzJIS for the purpose of improving the anchoring effect between the resin and the base.
Providing all of the structural features as required by the claims would inherently provide all the same material properties of the invention, including a fatigue resistance of the resin coating layer is greater than or equal to MPa.
The limitation “in a fatigue test for measuring a fatigue resistance surface pressure that represents strength against fatigue that is generated when a cyclic load is applied to the resin coating layer: (a) under conditions where a tester is a reciprocating load tester, a rotation speed of the reciprocating load tester is 3000 rpm, a number of cycles of applying a load is 105, a lubricating oil supply temperature representing a test temperature is 100 °C, a mating member of the sliding member is S45C, and the lubricating oil is engine oil; and (b) a maximum surface pressure in a state where the fatigue did not occur in the resin coating layer is defined as the fatigue resistance surface pressure, the fatigue surface pressure of the resin coating layer is 110 MPa or more” is inherently provided by the references since the combination of references discloses all the claimed limitations (structural and compositional) of the resin layer. As such, the material must also then perform the same in a fatigue test. Put another way, since the references disclose the same material with the same properties, it must also inherently perform the same in any test performed on the material.
Re clm 3, the improvement of Yoshida further discloses 300 µm as an upper limit of the resin thickness ([0025]).
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kawai JP 2018-193519 in view of Yoshida U.S. 2015/0307800 and Matsuhisa U.S. 2013/0023451 as applied to claim 11 above, and further in view of Yamashita JP 2016-142287.
Kawai in view of Yoshida and Matsuhisa disclose all the claimed subject matter as described above.
Re clm 5, Kawai does not disclose the mating member is a shaft, and the base is cylindrically shaped and has an inner peripheral surface for supporting the shaft.
Yamashita disclose a similar bearing in which the mating member is a shaft, and the base is cylindrically shaped and has an inner peripheral surface for supporting the shaft ([0038]; Fig. 1).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute any well-known sliding bearing arrangement with the improved design of Kawai and provide the mating member is a shaft, and the base is cylindrically shaped and has an inner peripheral surface for supporting the shaft to achieve the predictable result of slidingly supporting a rotating shaft.
Re clm 6, the improvement of Yamashita further discloses in the inner peripheral surface, the surface roughness in the axial direction of the shaft is greater than the surface roughness in the circumferential direction of the shaft (Fig. 3, 3A and 3B; [0023]-[0024]).
Response to Arguments
Applicant's arguments filed 30 December 2025 have been fully considered but they are not persuasive.
Applicant argues that the prior art fails to disclose all the features recited by claim 11. The examiner notes that the Patent Board Decision in the case dated 05 November 2025 affirmed the examiner’s rejection of all the claims. The examiner further notes that the newly amended limitations of claim 11 not only raise 112(a) and 112(b) issues, but the limitations do not further limit the claim in any meaningful way.
112(a) and 112(b) Rejections
Regarding claim 11, it is improper to claim the test parameters of a material in an apparatus claim. Applicant is merely reciting how a material performs under a very specific test but is not claiming what feature allows the material to perform that function. As best understood by the examiner, the limitation does not further structurally limit the claim in any way since the prior art discloses all the claimed features of the material and therefore must inherently perform the same way in any material test or have the same material properties. As noted in the rejections above, if Applicant believes that all the other limitations of the claim can be met by a resin layer however that resin layer would not perform the same in the fatigue test outlined in the claim, then Applicant has failed to disclose his invention.
103 Rejections
Applicant argues that the claims regarding the testing under specific conditions that simulate a usage environment of the sliding member are not found in the prior art, and therefore, the claim is patentable. This is incorrect. See MPEP §2112 which states:
[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
and:
"[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977) (footnote and citation omitted). The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (citing Best, 562 F.2d at 1255).
The prior art provides all the limitations of the resin layer; thus, the resin layer must inherently provide the same properties as the invention.
Based on the above, Applicant’s arguments are found unpersuasive.
Conclusion
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/ALAN B WAITS/Primary Examiner, Art Unit 3617