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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-12, in the reply filed on 8/26/2025 was acknowledged in the previous 9/10/2025 Office Action, wherein the traversal was found non-persuasive and the requirement made FINAL. Claims 13-15 remain withdrawn.
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.
Claim 8 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement.
The claims contain 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, at the time the application was filed, had possession of the claimed invention.
The newly amended claim 8 range “not greater than 30 degrees and not smaller than 60 degrees” was not present in the original filing and thus constitutes new matter. Further, there is no angle that is both not greater than 30 (i.e., 0 to 30) and also not smaller than 60 (i.e., 60 to 360) such that applicant would not have had possession (reduced to practice, drawings and/or written description) of the limitation even if it had been originally recited.
Claim 8 is rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain 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.
The newly amended claim 8 range “not greater than 30 degrees and not smaller than 60 degrees” is not enabled since there is no angle that is both not greater than 30 (i.e., 0 to 30) and also not smaller than 60 (i.e., 60 to 360). See MPEP 2164.08 and In re Wands, 858 F.2d 731, 737 (fed. Cir. 1988) regarding undue experimentation factors.
Claim Rejections - 35 USC § 112
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 1-12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
The claim 1 limitation “a coolant supply unit for supplying a coolant toward the spindle outer cylinder within a region where the engagement portion extends in an axial direction of the spindle outer cylinder” is unclear as to which one or more of the previously recited elements is “within a region…”, e.g., the supply unit, the coolant, spindle outer cylinder, etc. For purposes of applying the prior art elsewhere below the examiner interprets the region to be of the outer cylinder within (A1) as seen in applicant’s figure 2, and suggests amending as --a coolant supply unit for supplying a coolant toward a region of the spindle outer cylinder where the engagement portion extends in an axial direction of the spindle outer cylinder.—
The claim 2 limitation “the formation region of the engagement portion” lacks proper antecedent basis noting the 12/10/2025 amendment deletion of the “formation” phraseology from claim 1 from which claim 2 depends.
The claim 8 limitation “not greater than 30 degrees and not smaller than 60 degrees” sets forth an unclear range within a range in a single claim. Note that there is no angle that meets both requirements of not greater than 30 AND also not smaller than 60.
The remaining claims depend from the above and are thus similarly unclear/rejected.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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 1-8 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by Padgett US3705502.
Claim 1 (as best understood, see 35 USC 112 rejection). A gear spindle device (fig.3) for a rolling mill, comprising: a spindle outer cylinder (11a) having, at a first end side, an inner circumferential surface provided with an inner circumferential gear (12a); a spindle inner cylinder (13a) having an outer circumferential surface provided with an outer circumferential gear (15a) which engages with the inner circumferential gear; a seal member (25a) disposed between the spindle outer cylinder and the spindle inner cylinder, for holding a lubricant oil at an engagement portion (portion of 12a and 15a) between the inner circumferential gear and the outer circumferential gear; and a coolant supply unit (28a, 29a) for supplying a coolant toward the spindle outer cylinder within a region (40a or region of 11a near 12a/40a, see 35 USC 112b clarity rejection) where the engagement portion extends in an axial direction of the spindle outer cylinder, the coolant supply unit being disposed opposite to the seal member with respect to the engagement portion in the axial direction (left 28a/29a is opposite to right 25a with respect to right 12a/15a; and/or right 28a/29a is opposite to left 25a with respect to left 12a/15a).
Claim 2. The gear spindle device for a rolling mill according to claim 1, comprising: a housing (18a) which houses the coolant supply unit and the spindle outer cylinder in the formation region (any region of the portion of 12a and 15a, see 35 USC 112b clarity rejection) of the engagement portion.
Claim 3. The gear spindle device for a rolling mill according to claim 2, wherein the housing includes a first wall portion (wall of 18a) having a hole (hole inside 18a) into which a shaft (16a, 17a) fitting with the spindle outer cylinder at a second end side of the spindle outer cylinder in the axial direction is inserted, the hole having a smaller diameter (smallest diameter of 18a) than the spindle outer cylinder (diameter of 11a at largest portion thereof).
Claim 4. The gear spindle device for a rolling mill according to claim 1, wherein the coolant supply unit is configured to inject the coolant toward the spindle outer cylinder from a position above the spindle outer cylinder (see fig.3).
Claim 5. The gear spindle device for a rolling mill according to claim 1, wherein the coolant supply unit includes a nozzle (29a) configured to inject the coolant toward the spindle outer cylinder in the formation region of the engagement portion.
Claim 6. The gear spindle device for a rolling mill according to claim 5, wherein the nozzle is configured to inject the coolant in a direction from a second end side (of the nozzle) toward the first end side of the spindle outer cylinder in the axial direction (in that 11a is in the axial direction). If applicant wishes to limit the nozzle to --spray in an axial direction-- then the claim must be amended to expressly/clearly state such.
Claim 7. The gear spindle device for a rolling mill according to claim 6, wherein, when the spindle outer cylinder is seen in a horizontal direction which is orthogonal to a center axis of the spindle outer cylinder, an angular degree (45 degrees) formed between a center axis of the nozzle (axis going through center of 29a at 45 degrees to horizontal) and the center axis of the spindle outer cylinder (horizontal center axis of 11a) is not smaller than 30 degrees and not greater than 60 degrees. If applicant wishes to limit the nozzle to --spray in a direction that is between 30 and 60 degrees from the axial direction of the spindle-- then the claim must be amended to expressly state such.
Claim 8 (as best understood, see 35 USC 112 rejection). The gear spindle device for a rolling mill according to claim 5, wherein, when the spindle outer cylinder is seen in the axial direction, an angular degree formed between a center axis of the nozzle and a horizontal direction is not greater than 30 degrees and not smaller than 60 degrees (in as much as applicant’s own invention is, see 35 USC 112 rejection).
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 of this title, 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 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Padgett US3705502.
Claim 9. The gear spindle device for a rolling mill according to claim 1, wherein the examiner took Official Notice in the previous 9/10/2025 Office action that it was extremely well known in the cooling art to provide a temperature sensor to measure a temperature of the area being cooled for the purpose of allowing for more accurate temperature control. Applicant’s subsequent 12/10/2025 response did not adequately traverse the official notice by specifically pointed out why the noticed fact was not considered to be common knowledge or well-known in the art. Accordingly, the common knowledge or well-known in the art statement is taken to be admitted prior art. See MPEP 2144.03C, 37 CFR 1.111(b), Chevenard, 139 F.2d at 713, 60 USPQ at 241 and In re Ahlert, 424 F.2d 1088, 1091, 165 USPQ 418, 429 (CCPA 1970). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify as detailed above, which would necessarily result in a temperature sensor configured to measure a temperature of the spindle outer cylinder in the formation region of the engagement portion (i.e., since that is the region being cooled by Padgett.
Claim 10. The gear spindle device for a rolling mill according to claim 9, wherein it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to ensure that the temperature sensor be disposed at a position offset from the coolant supply unit in a direction from a second end side toward the first end side of the spindle outer cylinder in the axial direction so as not to block or interrupt the spray pattern. Additionally, note MPEP 2144.04(VI)(C) details that rearrangement of parts has been established by case law to be obvious where there is no unexpected result (criticality).
Allowable Subject Matter
Claims 11-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten to overcome the rejections under 35 U.S.C. 112(b) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The art of record does not suggest the totality of limitations, does not provide any teaching, suggestion or motivation to modify toward the entirety of applicant's claims, nor was there any readily apparent cogent reasoning that is unequivocally independent of hindsight that would have led one of ordinary skill in the art at the time the invention was made to modify the prior art to obtain the entirety of applicant’s claimed invention.
Response to Arguments
Applicant's argues that the claims have been amended to overcome the clarity rejections as well as to overcome the prior art rejections based on figures 1 and 2 of Padgett. This is not persuasive. The claims remain unclear as detailed in the reworded rejections above. Further, Padgett suggests the newly amended claims as is detailed in the reworded/new grounds of rejection above (i.e., now relying on the figure 3 embodiment of Padgett).
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VICTOR L MACARTHUR whose telephone number is (571)272-7085.
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/VICTOR L MACARTHUR/Primary Examiner, Art Unit 3618