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). The drawings must show every feature of the invention specified in the claims. Therefore, each resilient unit comprising a damping element must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. See rejection under 35 USC 112(a) below.
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
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 4-5 and 7-12 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 written description requirement. The claim(s) contains 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, as amended the claim now defines resilient units that are configured to enable resilient displacement and also each comprise a damping element which is presenting a combination that is new matter. First, the claim is stating that the assembly is both resilient and dampens, however based on page 6 the dampening feature is an alternative preferred embodiment thus there is no support for the resilient units preforming both the claimed functions simultaneously. While it is understood that something that is resilient would ultimately provide a dampening function this is not what the claim is stating. By reciting “each comprising the damping element” or the newly amended phrase “wherein the resilient units: comprise a damping unit” there is a requirement for a separate or integrated additional element to be present, this is not supported by the original disclosure. The original disclosure only supports one block of material between the housing and the outer ring, this is said to be resilient, this could also be said to be a dampening member but it is not “a resilient unit” while also “comprising” a damping element (it is resilient and can function as a dampening element, which all springs or elastic blocks can do, it does not comprise an additional element).
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 1, 4-5 and 7-12 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.
Regarding claim 1, viewing the claim in a context that the last clause is defining a function of the resilient unit which would be more consistent with the disclosure it is unclear what the metes and bounds of the claim are. Specifically it is unclear what is structurally required for the element/unit to configure the assembly to enable “the rotator shaft to rotate at speeds of more than 110,000 rpm.” What structure must the element/unit have in order to “enable” for this? The elastic unit while supporting the shaft through the bearing does not directly support rotation of the shaft, this is done via the bearing. The claim is linking the overall function of the assembly only to a dampening characteristic which is unclear because the function of rotational speed is linked to all factors of a bearing assembly, because of this it is unclear how this recitation is structurally limiting the bearing assembly or the dampening element and for the purpose of examination will be treated as a functional recitation consistent with what was stated in the advisory action mailed November 25, 2025 and the previous non-final office action.
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.
Claim(s) 1, 4, 5, 10 and 11, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas, USP 3,301,612, in view of Schard, USP 4,541,740.
Regarding claim 1, Thomas discloses a shaft bearing for mounting a spinning rotor of a rotor spinning machine (intended use), comprising a double-row rolling-element bearing comprising two rows (left and right bearing assemblies in figure 1) of rolling members (the double-row bearing element is in reference to two separate spaced apart bearings in the assembly as illustrated in figure 1 of the instant application, this is the same arrangement as figure 1 of Thomas), which are configured: on a radially inner side, to roll, on two inner raceways spaced apart from one another on a rotor shaft (13, see figure 1), and on a radially outer side, to roll on outer raceways (raceways of outer rings at 17) of two separate outer rings (two separate spaced apart outer rings are used, just like in the instant application) that are spaced apart from one another in a longitudinal axis direction of the rotor shaft (13); bearing members (14); and wherein the outer rings are borne in a shaft bearing housing (10) in a resiliently movable manner (via 14, this is a rubber member that provides the same function as 14a/14b of the instant application) by means of the bearing members (14) supported against the outer rings (at 17) and the shaft bearing housing (10), and the bearing members (14) each comprise an inner surface facing the outer rings (surface contacting the outer rings) and an outer surface facing the shaft bearing housing (outer surface contacting 10), and the bearing members (14) each comprise a resilient unit (14 are resilient units just like in the instant application) disposed radially between an outer surface of a respective one of the outer rings and an inner surface of the shaft bearing housing (see figure 1), wherein the resilient units: comprise a damping element (each unit “forms” a damping element), are configured to enable the outer rings to be resiliently displaceable relative to the shaft bearing housing in axial, radial and circumferential directions (as the material of resilient member 14 is rubber, and thus elastic, the outer ring can shaft in the axial, radial and circumferential direction based on the elasticity of the mount, while the degree of movement will vary depending on the specifics of the rubber the outer rings would still be resiliently displaceable, the claim does not set forth any specific structure that allows for this and thus this ability can be contributed directly to the material used, this appears to also be the case in the instant application), and each comprise the damping element (this recitation is being treated as if it is stating a function not an additional structural element as the recitation of a different structural element is inconsistent with the disclosure, see the rejection under 35 USC 112(a) above) configured to dampen movement of the outer rings in the axial, radial and circumferential directions, decreasing resonance and enabling the rotor shaft to rotate at speeds of more than 110,000 rpm (this is defining the function of the bearing and/or how it is intended to be used which is not structurally limiting the invention, see Remarks below).
Thomas discloses that the bearings include inner rings and thus does not disclose that the rolling elements roll, without any inner ring, in raceways on the shaft. Thomas also does not disclose that cages are positioned between the rotor shaft and the outer rings that are configured to fix the rolling members in place relative to one another in a circumferential direction.
Schard teaches an alternate double row bearing assembly were, instead of separate inner elements, the rolling elements (3 and 4) roll in raceway grooves formed on the outer surface of the shaft (2) and the rolling elements are retained in cages (see annotated figure below) that are positioned between the shaft (2) and the outer ring.
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It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Thomas and form the assembly so that the rolling elements roll in raceways that are formed directly on the outer surface of the shaft with cages to retain the spacing of the balls, as taught by Schard, since placing the raceways directly on the surface of the shaft provides the predictable result of reducing the overall number of components in the assembly which ultimately reduces material cost and overall weight. The modification can also be viewed as a substitution of one known raceway configuration (separate ring element) for another (raceway directly on the shaft), regardless of which known configuration is used the resulting product ultimately performs the same predictable function. Substituting one known raceway configuration for another known raceway configuration is not inventive. In addition adding a cage element is obvious and within the level of ordinary skill in the art as cages are common practice in the art for the predictable result of maintaining proper spacing between the rolling elements and preventing rolling elements from falling out. Using a known structural element common in bearings does not make the invention new, novel or inventive.
Thomas further discloses that the resilient/damping element is rubber and therefore does not disclose the element as one that comprises a plastics-containing material.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to make the damping element out of any elastic material including rubber or plastics containing material, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Regarding claim 4, Thomas discloses that the bearing members (14) are formed entirely from the resilient unit (in figure 1 all of 14 is the resilient unit).
Regarding claim 5, Thomas discloses that the outer rings are borne in the shaft bearing housing (10) by means of separate bearing members (14, one on each end), which are spaced apart from one another (see figure 1).
Regarding claim 10, Thomas discloses that the double-row rolling-element bearing comprises a ball bearing and the rows of rolling members comprise rows of balls (figure 1 shows ball bearing arrangements).
Regarding claim 11, Thomas discloses that each resilient unit (14) comprises a spring element comprising a metal or non-metal material (the block of material is a spring element made of rubber and in changing to another known material, plastic or plastic containing material the elastic function would still be preserved).
Claim(s) 7-9 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Thomas, USP 3,301,612, in view of Schard, USP 4,541,740, as applied to claim 1, and further in view of Hofmann, DD 268747.
Regarding claim 12, Thomas in view of Schard, as applied above, disclose that a lubricant reservoir is arranged in the region between the outer rings.
Hofmann teaches a double row bearing assembly with spaced apart outer rings (10) with a lubricant reservoir (formed of 8, 9 and 16) arranged in the region between the outer rings.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Thomas in view of Schard and add a lubricant reservoir between the two outer rings, as taught by Hofmann, for the predictable result of a providing a means that both distributes and retains lubricant within the bearing assembly. Providing bearings with lubrication reservoirs and lubrication systems is not new novel or inventive.
Regarding claim 7, Thomas in view of Schard and Hofmann discloses that lubricant reservoir (8,9,16) has a foam member (16 of Hofmann is a porous body, the term “foam” is not limited to any particular material or type of foam and foam can be hard or playable material, thus the porous body can be considered a foam member under the broadest reasonable interpretation since the specification does not provide an explicit definition for the material) configured for storing the lubricant (within the porous).
Regarding claim 8, Thomas in view of Schard and Hofmann discloses that a reservoir support (9 of Hofmann) configured to separate the lubricant reservoir from the rotor shaft (12). In this case the “support” is not structurally defined, any part of the reservoir assembly, connected to or as a separate member, between the foam and the shaft can be considered a support.
Regarding claim 9, Thomas in view of Schard and Hofmann discloses that the shaft bearing housing (10 of Thomas or 7 of Hofmann) comprises a closable lubricant filling opening (the system taught by Hofmann includes a supply hole at 13) adjacent to the lubricant reservoir (8,9,16). The term “closable” is defining a capability of the opening not structure of the opening, any hole in a body like 13 in Hofmann is ultimately “closable” as the hole can be plugged or sealed by anything. This is the same structure of the hole 19 that is shown in the figure of the instant application, the hole of the system of Hofmann is “closable” in the same manner as the hole in the instant application.
Response to Arguments
Applicant's arguments filed June 5, 2026 have been fully considered but they are not persuasive.
With regards to the drawing object and the rejection under 35 USC 112(a), these issues raise and fall together and will be treated together. With regards to the rejection Applicant points to the specification, paragraph 0042, where it states “the resilient unit can be formed by a damping element” as support and states “this disclosure makes clear that a single structural element can itself be “formed by a damping element”. However this is not what the claim states and thus the claims and disclosure don’t align which is causing the confusion and the new matter issue to be raised. What the claim states is that there are bearing members which comprise a resilient unit, Applicant uses this phrasing as the bearing member in the disclosure is the generic recitation for the feature and this is made of or ‘comprises’ a resilient unit. However, then the claim states that the resilient units “comprise a damping element” and by stating “comprise” it reads as if, or that there can be, yet another additional element to the blocks or units 14a and 14b, this is drastically different then that the resilient unit is “formed by” a damping element as the use of “comprise” is suggestive of an additional element when used in combination with the phrase “unit” as a unit is something that is more traditionally made up of multiple parts. The issue is not that there isn’t support in general the issue is that there is not clear support for what is covered by the claim as currently presented. It is suggested that “comprise a” be changed to - -formed by- - in line 22 and “each comprise” be deleted in line 26 of the claim as this would make the claim read as if the units are damping elements that perform the function which is more consistent with the disclosure and what Applicant is arguing and would be supported by the current drawings.
With regards to the rejection under 35 USC 112(b) Applicant argues that the claim clearly and distinctly sets forth the structure and the structural elements “work together” to achieve the recited function. However the claim does not link the function to all of the structure which is what is causing the issue, the function in the claim is only linked to the damping element as it states “the damping element configured to dampen movement…and enabling the rotor shaft to rotate at speeds”. The last clause only states that it is the damping element that does this, not that all the structural elements work together to achieve this. However, even if amended to state “the shaft bearing configured to” or the double-row rolling element bearing and the resilient/damping elements together “are configured to dampen and support rotational speeds” it would still be unclear what additional structure this recitation would actually require. Does this require particular materials? Specific geometry? Specific sizing? By using the phrasing “configured to” it is suggestive of some special configuration but it is unclear what that is and how it specifically works to achieve the function, what Applicant is arguing is that it is all the parts together in the claim but if this is the case then it’s the configuration of the parts already recited that does this, that configuration is already claimed and therefore there should be no need to state “configured to” as the structure as a whole would simply preform the function, however this same degree of flexibility must be given when applying prior art to the claim, if the prior art includes all the structural features as set forth in the claim then it to must also perform or be capable of performing the function.
In response to applicant's argument that the references relate to different fields and thus are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, both reference focus on bearing configurations and more specifically bearing cartridges, the specific fields that the bearings are being used in does not exclude the structure that they show from being applicable to the claimed invention which is also a shaft bearing or cartridge style bearing. Applicant also directs this argument specifically to the rotational speed but again it is unclear what specifically makes the bearing unit claimed “configured” to operate at those speeds. It appears that structurally the invention by Applicant is found in the prior art of record, Applicant may have optimized this structure through material sections and other modifications but these changes as currently claimed are not outside the level of ordinary skill in the art.
Applicant further states that the Examiner’s position conflates material properties with the specific structural configuration of the claims. However the argument does not point to what Applicant believes that the rejection is structurally lacking that is recited in the claim and only points to the functional “configured to” language of the claim. However, it is some of this configured to language that is causing the additional problems above, if it is not the structure previously listed alone that allows for this what additional structural configurations are required? The combination presented above renders obvious the claimed structure recited earlier in the claim, Applicant does not appear to be arguing that the combination does not render obvious the structure, the configured to language is not clearly setting forth any additional structural distinction and is treated as functional language that would only be attributed to the structure previously recited and thus the structure as presented in the prior art rejection would also perform or be capable of preforming the claimed functions. See MPEP 2173.05(g).
Applicant further uses this functional language to argue that the invention is not obvious as above because the prior art does not address this function, however the position is maintained that this functional recitation in the claim does not provide any structural distinct to the claim or over the prior art of record. If there is an additional structural modification needed to configure Applicant’s invention do this then that structure should be recited in the claim otherwise the recitation is a non-limiting functional recitation. Again it is noted that the function is also only linked to the resilient/damping element while Applicant is arguing that the function is the result of the whole configuration and thus the argument is also inconsistent with the claim construction.
With regards to the newly added recitation regarding the material and the prior art using rubber, this argument is addressed by the modified rejection above that addresses this material change as being obvious in view of the prior art of record.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Applicant is arguing there is no motivation to combine because of the disclosed fields of endeavor, this is a non-analogous art argument. Motivation to combine is presented in the rejection above, Applicant is not arguing that this is in accurate or flawed, but rather Applicant is focusing on the different environments of use and the RPMs in those fields, this does not excluded features with respect to the standalone bearing elements from being combined in a manner that demonstrates that the invention by Applicant is obvious in view of the prior art. In addition, like bearings are commonly used across a wide range of operational speeds, the disclosed overall device or operation speed does not mean that the bearing, placed in another object that rotates at a different speed, would be unsatisfactory at performing its task.
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 PILKINGTON whose telephone number is (571)272-5052. The examiner can normally be reached Monday through Friday 7-3.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617
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