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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/18/2026 has been entered.
Status of claims
Claims 1 and 18 have been amended; claims 1-20 remain for examination, wherein claim 1 is an independent claim.
Information Disclosure Statement
IDS filed on 11/21/2025 has been recorded.
Previous Rejections/Objections
Previous rejection of Claims 1-20 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
has been withdrawn in view of the Applicant's argument filed on 03/18/2026.
However, in view of the Applicant’s amendment, newly cited prior art(s), and reconsideration, a new ground rejection has been listed as following.
Claim Rejections - 35 USC § 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 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.
Claim(s) 1-4 and 7-11 is/are under 35 U.S.C. 103 as being unpatentable over Kino Nobuo et al (JP 2001330101 A, with on-line translation, listed in IDS field on 4/22/2025, Thereafter JP’101) in view of Miyamoto et al (US-PG-pub 2017/0121786 A1, thereafter PG’786).
Regarding claim 1, JP’101 teaches a bearing parts manufacture by quenching of bearing steel (par.[0009] and [0052] of JP’101), which reads on the bearing part composed of a steel as recited in the instant claim. JP’101 indicates that: “a metal structure of a rolling part surface layer of the each rolling element comprises mainly martensitic structure, an average crystal grain size of martensite crystal grains is 0.5 μm or less” and “remaining austenite exists in the metal structure of the rolling part surface layer of the each rolling element, and an austenite remaining amount is 30 area % or less”. (abstract and examples in table 3 of JP’101), which overlaps “the 70% or more martensite crystal grain in quenching layer” and “grain size of martensite belong to 1st group having 1.5 mm or less”, and “the ratio of total area of the plurality of austenite crystal grains in the quenched-hardened layer” as claimed in the instant claim. Overlapping in microstructure distribution and crystal grain size creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to treat alloy to obtain the desired microstructures as claimed from the disclosure of JP’101 since JP’101 discloses a similar bearing steel manufacture by same quenching hardening process as disclosed in the instant invention throughout whole disclosing range. Regarding the classification of the plurality of martensite according to the crystal grains size (1st and 2nd groups), which is considered to be obvious to one of ordinary skill in the art at the time the invention was made. JP’101 does not specify the claimed density of cementite grain as claimed in the instant claim. PG’786 teaches a high-carbon hot-rolled steel sheet for parts required to have high hardenability and PG’786 teaching obtaining high hardness after quenching has been performed, that is, for example, a Vickers hardness of more than HV620 (Abstract and par.[0009] of PG’786). PG’786 teaches that the average grain diameter of all the cementite is 0.60 μm or more and 1.00 μm or less, and in which the average grain diameter of cementite is 0.40 μm or more. (par.[0022] of PG’786) and PG’786 teaches that the cementite density is 0.13 pieces/mm2 or less (Abstract and par.[0052] of PG’786), which overlaps the claimed number density of cementite grain as claimed in the instant claim, which is a prima facie case of obviousness. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the number density of cementite grain as claimed from the disclosure of PG’786 for the alloy of JP’101 in order to obtain a high-carbon hot-rolled steel sheet excellent in terms of workability and hardenability. (par.[0001] of PG’786).
Regarding claim 2, JP’101 teaches a bearing parts manufacture by quenching of bearing steel (par.[0009] and [0052] of JP’101). JP’101 does not specify 3.1 or less of aspect ratio of the martensite crystal grains belonging to the first group as recited in the instant claim. PG’786 teaches a high-carbon hot-rolled steel sheet for parts required to have high hardenability and PG’786 teaching obtaining high hardness after quenching has been performed, that is, for example, a Vickers hardness of more than HV620 (Abstract and par.[0009] of PG’786). PG’786 teaches that spheroidal cementite is formed, after hot rolling has been performed. Here, “spheroidal” refers to a case where the proportion of the amount of cementite having an aspect ratio (the length of major axis/the length of minor axis) of 3 or less to the total amount of cementite is 90% or more in terms of volume fraction. (par.[0052] of PG’786), which reads on the claimed aspect ratio since the ratio of the austenite grain size result the ratio of the quenched martensite phase. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to applying the grain size and aspect ratio controlling as demonstrated by PG’786 for the alloy of JP’101 in order to obtain a high-carbon hot-rolled steel sheet excellent in terms of workability and hardenability. (par.[0001] of PG’786).
Regarding claims 3 and 8, JP’101 specify applying carbonitriding and quenching for the steel bear part (table 3 and par.[0051]-[0052] of JP’101) and JP’101 teaches the average nitrogen concentration in the surface layer part is 0.3% by mass or more and 0.6% by mass or less (Abstract, par.[0040], and examples of JP’101), which reads on the claimed nitrogen concentration in quenched layer as claimed in the instant claims.
Regarding claims 4 and 9-11, JP’101 teaches that “remaining austenite exists in the metal structure of the rolling part surface layer of the each rolling element, and an austenite remaining amount is 30 area % or less”. (abstract and examples in table 3 of JP’101), which overlaps the claimed amount of RA (remaining austenite) as claimed in the instant claims. Overlapping in amount range of RA creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to treat alloy to obtain the desired RA as claimed from the disclosure of JP’101 since JP’101 discloses a similar bearing steel manufacture by same quenching hardening process as disclosed in the instant invention throughout whole disclosing range.
Regarding claim 7, JP’101 teaches bearing including outer ring, inner ring, and rolling element (Abstract, par.[0036]-[0038], and Fig.1-2 of JP’101), which reads on the claimed nitrogen amount in the quenching layer as claimed in the instant claim.
Claims 5-6 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over JP’101 in view of PG’786 and further in view of Niitsu et al (JP 4114218 B2, listed in IDS field on 4/22/2025, with on-line translation, thereafter JP’218).
Regarding claims 5-6 and 12-20, JP’101 teaches a bearing parts manufacture by quenching of bearing steel (par.[0009] and [0052] of JP’101). JP’101 in view of PG’786 does not specify applying high carbon Cr bearing steel SUJ2 (cl.6 and 19-20) and hardness 730 HV (cla.5 and 12-18). However applying high carbon Cr bearing steel SUJ2 is well-known as demonstrated by JP’218. JP’218 teaches that SUJ2 has a high content of C and Cr in the alloy components for rolling bear application (par.[0006]-[0007] of JP’218). JP’219 provides examples with SUJ2 composition (in table 4 of JP’218) having treated to obtain surface HV 745 (table 5 of JP’218), which reads on the claimed limitation in the instant claims. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to applying the well-known high carbon Cr bearing steel SUJ2 as demonstrated by JP’218 for the alloy of JP’101 since both JP’218 and JP’101 are similar bearing steel manufacture by same quenching hardening process as disclosed in the instant invention throughout whole disclosing range.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-20 have been considered but they are moot in view of the new ground rejection as stated above.
The Applicant’s arguments have been summarized as following:
1, Regarding the rejection under 35 U.S.C. 103 as being unpatentable over Kino Nobuo et al (JP’101) in view of Miyamoto et al (PG’786), Cited prior art(s) does not specify the claimed bimodal distribution and wherein the area ratio of the first group is 0.3 or more, and wherein the value obtained by dividing the total area of the first group excluding the minimum grain size grain by the total area of all martensite crystal grains is less than 0.3.Taken together, these limitations define a specific bimodal grain size distribution in the quench-hardened layer, characterized by the deliberate coexistence of a population of comparatively larger grains (first group) and a population of comparatively smaller grains (second group) in a controlled ratio.
2, For the largest grains in such a distribution to have an average grain size exceeding 1.5 µm as described in Claim 1, which different to the uniform grain size distribution as disclosed by JP’101.
3, The classification into first and second groups in Claim 1 reflects a specific microstructural design principle in which the deliberate coexistence of two grain size populations in controlled area ratios achieves improved wear resistance and indentation formation resistance that is not achievable by the uniform fine- grain architecture of JP'101. JP'101 provides no teaching or suggestion of this design principle, and the Office has cited no evidence that such a bimodal approach was known or suggested in the art of bearing part design.
4, the present application is directed to bearing parts having improved resistance to wear and indentation formation caused by foreign matter contaminants in lubricating oil, which is different to JP’101 since JP'101 is directed to improving rolling fatigue strength of power rollers in continuously variable.
In response,
Regarding the arguments 1-3, there is no limitation in the instant claim to indicates a bimodal grain size distribution. Actually since claim 1 indicates that first group martensite crystal grain (1.5 mm or less in grain size) is 0.3 or more in total area, which means it is possible all of the martensite crystal grain may belong to first group.
Regarding the argument 4, JP’101 teaches a bearing parts application of the steel manufacture by quenching of bearing steel (par.[0009] and [0052] of JP’101). The argued property of “improved resistance to wear and indentation formation caused by foreign matter contaminants in lubricating oil” is not included in limitation of the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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