Detailed Office Action
Notice of Pre-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 .
Information Disclosure Statement
The information disclosure (IDS) submitted on 04/09/26 was filed after the mailing date of the Non-Final on 03/19/26. The submission is in compliance with the provisions of 37 CFR 1.97 (a statement was made). Accordingly, the IDS has been considered by the examiner.
Response to Amendments
The claim set submitted on 06/18/26 has been entered. Claims 1 – 4 and 6 remain pending and under examination.
Claim Rejections – U.S.C. §103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (JP2006/046417, using espacenet translation) in view of Kino (JP2001330101, using espacenet, cited in the OA on 11/29/24)
Regarding claim 1, Watanabe teaches a rolling element [Title] which comprises an inner and outer raceway and rolling element [0043, Fig 5]. Watanabe teaches that the roller bearing is made from SUJ2 [0048], which meets the claimed limitation of the rolling element being composed of steel and specifically SUJ2.
Watanabe teaches that the roller bearing can be a needle type, meeting the broadest reasonable interpretation of a cylindrical roller bearing [0048].
Watanabe teaches that a martensite and austenite structure [0057] is produced by carbonitriding, heating and quenching, and tempering of the roller bearing [0052], meeting the claimed limitation of a bearing having a quench-hardened layer in at least one of an inner ring raceway surface of the inner ring, an outer ring raceway surface of the outer ring, and a rolling contact surface of the rolling element
Watanabe teaches that the inventive products have a austenite range of 12 – 24 vol% [0069, Table 1], implying martensite is in a range of 76 – 88% (and wherein the martensite would be tempered [0052]), meeting the claimed limitation of “a plurality of martensite crystal grains and a plurality of austenite crystal grains”, “a ratio of a total area of the plurality of martensite crystal grains in the quench-hardened layer is more than or equal to 70%”, and “a volume ratio of the austenite crystal grains in the quench-hardened layer is less than or equal to 30% in the surface of the quench-hardened layer at the central position in the rolling surface axial direction.”
Watanabe teaches that the nitrogen concentration is 0.12 – 0.62 mass% [0070, Table 1], which falls within the claimed range. The examiner notes that the nitrogen concentration was tested at 50 µm from the surface [0058], however, given that the nitrogen is introduced by carbonitriding of the surface the nitrogen concentration at 10 µm (as measured in the claim) would be same or higher than at 50 µm (a deeper depth).
Lastly, Watanabe teaches that the hardness of the surface layer is 730 – 780 HV [0071], which falls with the claimed range.
Watanabe does not explicitly teach the size of the martensitic grains.
Kino teaches a rolling element with a surface layer mainly composed of martensite [0012]. Kino teaches that the average crystal grain size of the martensite crystal grain is controlled to be 0.5 µm or less [0020], which overlaps with the claimed range. Kino teaches that the martensitic grain size is controlled to be small because when the martensite crystal grains are small the resistance to fragmentation and decomposition increases and the matrix structure is toughened when subjected to fatigue [0021].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the martensite grains of Watanabe and controlled them to have an average size of 0.5 µm or less as taught by Kino. Watanabe and Kino are directed to the same field of endeavor of martensitic steel for bearing components and as such, an ordinarily skilled artisan would have a reasonable expectation of success in controlling the grain size of martensite in Watanabe to the range disclosed by Kino. A person of ordinary skill in the art would also have been motivated in order to increases resistance to fragmentation and decomposition and toughen the matrix when subjected to fatigue, as disclosed by Kino.
In regards to the claim limitations, “a first group” and “a second group” can be defined by a person of ordinary skill by selecting 2 different grain size ranges within the 0.5 µm or less range of Kino, meeting the claimed limitation of a “plurality of martensite crystal grains are classified into a first group and a second group” and a person can select non-overlapping grain size ranges for the two groups, meeting the limitation of “minimum value of crystal grain sizes of the martensite crystal grains belonging to the first group is larger than a maximum value of crystal grain sizes of the martensite crystal grains belonging to the second group”.
Additionally, a person of ordinary skill in the art could define the first group as a grain size range within the grain size range of up to 0.5 µm that make up 50% or more of the total of martensitic grain sizes to meet the claimed limitation of “a value obtained by dividing a total area of the martensite crystal grains belonging to the first group by the total area of the plurality of martensite crystal grains is more than or equal to 0.5”. To this, because a “minimum crystal grain size” is not defined, an ordinarily skilled artisan could select any value such that the first group crystal grains with the exception of those with a “minimum crystal grain size” is in a total area of less than 50% of the total area of the martensitic crystal grains to meet the limitation of “a value obtained by dividing, by the total area of the plurality of martensite crystal grains, a total area of the martensite crystal grains belonging to the first group except for a martensite crystal grain that has a minimum crystal grain size and that belongs to the first group is less than 0.5”
In regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan, before the effective filing date of the claimed invention, to have selected the overlapping portion of the ranges disclosed. Selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05.I).
Regarding claim 6, Watanabe in view of Kino teaches the invention as applied in claim 1. Watanabe teaches that the composition is made from SUJ2 [0048, 0117] which has a carbon composition of ~1% and that the surface is subjected to carbonitriding [0117, 0044]. As such, the carbon concentration in the surface would be higher than 0.5 wt%.
Regarding claim 3, Watanabe teaches a rolling element [Title] which comprises an inner and outer raceway and rolling element [0043, Fig 5]. Watanabe teaches that the roller bearing is made from SUJ2 [0048], which meets the claimed limitation of the rolling element being composed of steel.
Watanabe teaches that the roller bearing can be a needle type, meeting the broadest reasonable interpretation of a cylindrical roller bearing [0048].
Watanabe teaches that a martensite and austenite structure [0057] is produced by carbonitriding, heating and quenching, and tempering of the roller bearing [0052], meeting the claimed limitation of a bearing having a quench-hardened layer in at least one of an inner ring raceway surface of the inner ring, an outer ring raceway surface of the outer ring, and a rolling contact surface of the rolling element
Watanabe teaches that the inventive products have an austenite range of 12 – 24 vol% [0069, Table 1], implying martensite is in a range of 76 – 88% (and wherein the martensite would be tempered [0052]), meeting the claimed limitation of “a plurality of martensite crystal grains and a plurality of austenite crystal grains”, “a ratio of a total area of the plurality of martensite crystal grains in the quench-hardened layer is more than or equal to 70%”, and “a volume ratio of the austenite crystal grains in the quench-hardened layer is less than or equal to 30% in the surface of the quench-hardened layer at the central position in the rolling surface axial direction.”
Lastly, Watanabe teaches that the hardness of the surface layer is 730 – 780 HV [0071], which falls with the claimed range.
Watanabe does not explicitly teach the size of the martensitic grains.
Kino teaches a rolling element with a surface layer mainly composed of martensite [0012]. Kino teaches that the average crystal grain size of the martensite crystal grain is controlled to be 0.5 µm or less [0020], which overlaps with the claimed range. Kino teaches that the martensitic grain size is controlled to be small because when the martensite crystal grains are small the resistance to fragmentation and decomposition increases and the matrix structure is toughened when subjected to fatigue [0021].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the martensite grains of Watanabe and controlled them to have an average size of 0.5 µm or less as taught by Kino. Watanabe and Kino are directed to the same field of endeavor of martensitic steel for bearing components and as such, an ordinarily skilled artisan would have a reasonable expectation of success in controlling the grain size of martensite in Watanabe to the range disclosed by Kino. A person of ordinary skill in the art would also have been motivated in order to increases resistance to fragmentation and decomposition and toughen the matrix when subjected to fatigue, as disclosed by Kino.
Furthermore, “a third group” and “a fourth group” can be defined by a person of ordinary skill by selecting 2 different grain size ranges within the 0.5 µm or less of Kino, meeting the claimed limitation of a “plurality of martensite crystal grains are classified into a third group and a fourth group” and a person can select non-overlapping grain size ranges for the two groups, meeting the limitation of “minimum value of crystal grain sizes of the martensite crystal grains belonging to the third group is larger than a maximum value of crystal grain sizes of the martensite crystal grains belonging to the fourth group”.
Additionally, a person of ordinary skill in the art could define the third group as a grain size range within the grain size range of up to 0.5 µm of Kino that make up 50% or more of the total of martensitic grain sizes to meet the claimed limitation of “a value obtained by dividing a total area of the martensite crystal grains belonging to the third group by the total area of the plurality of martensite crystal grains is more than or equal to 0.7”. To this, because a “minimum crystal grain size” is not defined, an ordinarily skilled artisan could select any value such that the first group crystal grains with the exception of those with a “minimum crystal grain size” is in a total area of less than 50% of the total area of the martensitic crystal grains to meet the limitation of “a value obtained by dividing, by the total area of the plurality of martensite crystal grains, a total area of the martensite crystal grains belonging to the third group except for a martensite crystal grain that has a minimum crystal grain size and that belongs to the third group is less than 0.7”.
In regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan, before the effective filing date of the claimed invention, to have selected the overlapping portion of the ranges disclosed. Selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05.I).
Claims 2 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe (JP2006/046417, using espacenet translation) in view of Kino (JP2001330101), as applied to claims 1 and 3, in further view of Da (WO2018/159840, using espacenet translation, cited in the Oa on 11/29/24)
Regarding claims 2 and 4, Watanabe in view of Kino teaches the invention as applied in claims 1 and 3. Watanabe does not explicitly teach the aspect ratio of the martensitic grains.
Da teaches a roller bearing containing an outer and inner ring as well as rolling elements [0017], parts of which have been quench hardened [0018]. Da teaches producing fine martensite grains of 3.8 µm or less [0017]. Da explicitly states that martensitic grains can have an aspect ratio of 2.4 – 2.6, which overlaps with claims 2 and 4 in order to improve toughness and wear resistance [0152]. Lastly, Da further states that the smaller the aspect ratio of a martensite block is (the closer to 1), the less likely it is to become a source of stress concentration [0150].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the martensite grains of Watanabe in view of Kino and controlled the aspect ratio to be 2.4 – 2.6 in order to improve toughness and wear resistance, as taught by Da. Watanabe in view of Kino and Da are directed to quench hardened bearing components with martensitic grain structure and therefore, a person of ordinary skill in the art would have a reasonable expectation of success in achieving predictable results. An ordinarily skilled artisan would be motivated to control the aspect ratio of martensite in order to improve wear resistance and toughness as well as reduce stress concentration.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Strandell (US2010/0296764) in view of Kino (JP2001330101, using espacenet, cited in the OA on 11/29/24)
Regarding claim 3, Strandell teaches a rolling element [Title] which comprises an inner and outer raceway and rolling element [0002]. Strandell teaches that the bearing steel is for the rolling element or rolling ring [0001], which meets the claimed limitation of being composed of steel, and that a martensite structure is produced by heating and quenching (meeting the claimed limitation of a bearing having a quench-hardened layer in at least one of an inner ring raceway surface of the inner ring, an outer ring raceway surface of the outer ring, and a rolling contact surface of the rolling element) [0008]
Strandell teaches cylindrical roller bearing [0076].
Strandell teaches producing martensite in at least 75 vol% [0020] with residual austenite 0 – 30 vol% in the surface [0054] and the martensite being tempered martensite [0053], meeting the claimed limitation of “a plurality of martensite crystal grains and a plurality of austenite crystal grains”, “a ratio of a total area of the plurality of martensite crystal grains in the quench-hardened layer is more than or equal to 70%”, and “a volume ratio of the austenite crystal grains in the quench-hardened layer is less than or equal to 30% in the surface of the quench-hardened layer at the central position in the rolling surface axial direction.”
Lastly, Strandell teaches that the hardness of the surface layer is 56 – 68 HRC (~613 – 940 HV) [0054], which overlaps with the claimed range.
Strandell does not explicitly teach the size of the martensitic grains.
Kino teaches a rolling element with a surface layer mainly composed of martensite [0012]. Kino teaches that the average crystal grain size of the martensite crystal grain is controlled to be 0.5 µm or less [0020], which overlaps with the claimed range. Kino teaches that the martensitic grain size is controlled to be small because when the martensite crystal grains are small the resistance to fragmentation and decomposition increases and the matrix structure is toughened when subjected to fatigue [0021].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the martensite grains of Strandell and controlled them to have an average size of 0.5 µm or less as taught by Kino. Strandell and Kino are directed to the same field of endeavor of martensitic steel for bearing components and as such, an ordinarily skilled artisan would have a reasonable expectation of success in controlling the grain size of martensite in Strandell to the range disclosed by Kino. A person of ordinary skill in the art would also have been motivated in order to increases resistance to fragmentation and decomposition and toughen the matrix when subjected to fatigue, as disclosed by Kino.
Furthermore, “a third group” and “a fourth group” can be defined by a person of ordinary skill by selecting 2 different grain size ranges within the 0.5 µm or less of Kino, meeting the claimed limitation of a “plurality of martensite crystal grains are classified into a third group and a fourth group” and a person can select non-overlapping grain size ranges for the two groups, meeting the limitation of “minimum value of crystal grain sizes of the martensite crystal grains belonging to the third group is larger than a maximum value of crystal grain sizes of the martensite crystal grains belonging to the fourth group”.
Additionally, a person of ordinary skill in the art could define the third group as a grain size range within the grain size range of up to 0.5 µm of Kino that make up 50% or more of the total of martensitic grain sizes to meet the claimed limitation of “a value obtained by dividing a total area of the martensite crystal grains belonging to the third group by the total area of the plurality of martensite crystal grains is more than or equal to 0.7”. To this, because a “minimum crystal grain size” is not defined, an ordinarily skilled artisan could select any value such that the first group crystal grains with the exception of those with a “minimum crystal grain size” is in a total area of less than 50% of the total area of the martensitic crystal grains to meet the limitation of “a value obtained by dividing, by the total area of the plurality of martensite crystal grains, a total area of the martensite crystal grains belonging to the third group except for a martensite crystal grain that has a minimum crystal grain size and that belongs to the third group is less than 0.7”.
In regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan, before the effective filing date of the claimed invention, to have selected the overlapping portion of the ranges disclosed. Selection of overlapping portions of ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05.I).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Strandell (US2010/0296764) in view of Kino (JP2001330101, using espacenet, cited in the OA on 11/29/24), as applied to claims 1 and 3, in further view of Da (WO2018/159840, using espacenet translation, cited in the Oa on 11/29/24)
Regarding claim 4, Strandell in view of Kino teaches the invention as applied in claims 1 and 3. Strandell does not explicitly teach the aspect ratio of the martensitic grains.
Da teaches a roller bearing containing an outer and inner ring as well as rolling elements [0017], parts of which have been quench hardened [0018]. Da teaches producing fine martensite grains of 3.8 µm or less [0017]. Da explicitly states that martensitic grains can have an aspect ratio of 2.4 – 2.6, which overlaps with claims 2 and 4 in order to improve toughness and wear resistance [0152]. Lastly, Da further states that the smaller the aspect ratio of a martensite block is (the closer to 1), the less likely it is to become a source of stress concentration [0150].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the martensite grains of Strandell in view of Kino and controlled the aspect ratio to be 2.4 – 2.6 in order to improve toughness and wear resistance, as taught by Da. Strandell in view of Kino and Da are directed to quench hardened bearing components with martensitic grain structure and therefore, a person of ordinary skill in the art would have a reasonable expectation of success in achieving predictable results. An ordinarily skilled artisan would be motivated to control the aspect ratio of martensite in order to improve wear resistance and toughness as well as reduce stress concentration.
Response to Arguments
Applicant's arguments filed 06/18/26 have been fully considered but they are not persuasive.
Applicant argues that the range of martensite relied upon in the rejection is invalid because it is under the assumption that the microstructure is austenite and martensite. Applicant argues that the present invention’s specification describes other microstructures being present and therefore, this would be the case in Watanabe. This is not persuasive. Watanabe describes that the microstructure is martensite and austenite [0057]. Moreover, applicant’s argument that the instant invention’s specification describes ferrite and cementite grains being present does not provide evidence that these microstructures are in Watanabe. Additionally, these microstructures are not present in the claims and therefore are not commensurate with what is claimed. Applicant’s arguments are therefore unpersuasive.
Applicant argues that the volume ratio described by Watanabe and relied upon does not meet the claimed area ratio. This is not found persuasive. Applicant does not provide any evidence that these would be different amounts. The limitation of total area within a three-dimensional object/layer would be the same as total volume given that area is a two-dimensional measurement whereas volume is a three dimensional measurement. To be clear, applicant’s claimed limitation is the total area of martensite within a three-dimensional object and Watanabe specifically discloses the volume area. As such, the range of Watanabe overlaps with the claimed range and applicant’s argument is unpersuasive.
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights