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 .
The amendment dated 12/03/2025 has been considered and entered. The response has been considered but was not found to be persuasive. Therefore, the previous rejections are maintained. Also, an alternative new ground of rejections is made using an additional reference as necessitated by the amendment.
The TW reference used for making the rejections was provided. The English translation referenced in applicant’s response was provided alone with the TW reference. Applicant properly cited the reference for discussing the aspect ratio calculation. No other action is needed by the examiner.
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.
The factual inquiries 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.
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.
Claims 1 – 7, 9 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over Sakai et al. (TW 202116893A)
In regards to claim 1, Sakai teaches liquid crystalline resin composition for ball bearing sliding member containing a liquid crystalline resin A), a particulate filler having a diameter of from 0.3 to 5 mm and present at from 2.5 to 22.5% in the composition B) according to the limitation of micro filler of the claim, a plate-like filler present at from 2.5 to 32.5% in the composition C) (abstract). The filler B can be quartz powder, glass beads, potassium aluminum silicate etc. [0026]. The filler C can be mica preferably having particle size of from 1 to 100 mm or more preferably from 5 to 100 mm or from 10 to 100 mm and thus can also provide the limitation of micro-filler [0030, 0034]. The thickness of the mica particles is from 0.01 to 1 mm, thus providing an aspect ratio of particle size to thickness that overlaps the claimed range [0035].
Epoxy polymer D can be epoxy-olefin copolymer such as glycidyl ester-olefin copolymer D1 which is present at preferably from 1 to 5% in the composition according to the limitation of olefin-copolymer [0039, 0050]. While the preferred amount does not overlap the limitation of at least 7%, it is close enough to make the claimed limitation obvious. A prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
A mold release agent F can be polyolefin which is present at from 0.1 to 3% in the composition [0052, 0053]. Such polyolefin mold-release agents are known to include polyolefin copolymers and thus makes obvious the olefin copolymer of the claim (see abstract of Isogawa et al. JP 2011-57726A). Thus, when the polyolefin of Isogawa is used as mold release agent in Sakai, the amount of olefin copolymers of the claims is overlapped.
The composition can comprise carbon black at amounts of from 0.5 to 5% according to the limitation of carbon-based filler [0051, 0052]. Combinations of other ingredients may also be present [0054]. Other fillers may also be present such as calcium sulfate etc. [0055].
In regards to claim 2, Sakai teaches the composition having the claimed fillers as previously stated [0026].
In regards to claims 3, 4, Sakai teaches the composition wherein the filler C such as mica provides the macro filler of the claim, and wherein the ratio of the macro filler to the micro filler overlaps the claimed ranges.
In regards to claim 5, Sakai teaches the composition wherein filler C is present at amounts overlapping the claimed range.
In regards to claim 6, Sakai teaches the composition wherein the filler C provides the claimed limitation as previously stated.
In regards to claim 7, Sakai teaches the composition wherein filler C can be mica having particle size of from 1 to 100 mm and thus can also provide the limitation of micro filler as previously stated. The mica can be surface treated with silane coupling agent [0036].
In regards to claim 9, Sakai teaches the composition having the olefin repeating unit and glycidyl ester of a,b-unsaturated acid repeating units for D1 [0039].
In regards to claims 10, 11, Sakai teaches the composition having the claimed limitations as previously stated.
In regards to claim 12, Sakai teaches the composition for rolling bearing which can comprise additional fillers but does not particularly recite the claimed fillers. Ishii et al. (US 2015/0204383) teaches rolling bearing which can comprise molybdenum disulfide in the composition for reducing friction [0126, 0161]. Thus, persons of ordinary skill in the art at the time the claim was filed would have found it obvious to have used the fibrous filler of Ishii in the composition of Sakai, as such fillers can be used to reduce friction and since Sakai allows for the presence of additional fillers and ingredients to improve the properties. As they are minor and optional ingredients, they would be present in minor amounts of the claimed range.
In regards to claims 13 – 19, Sakai teaches the ball bearing sliding part comprising the claimed composition as previously stated.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the particle size of the mica was preferably from 10 to 100 microns with thickness of from 0.01 to 1 micron which provides an aspect ratio of 10 or higher. The argument is not persuasive.
While the mica most preferably has a particle size of from 10 to 100 microns, it can have particle sizes of preferably 1 to 100 microns and thus provides an aspect ratio that overlaps the claimed range.
Applicant argues that the olefin copolymer is present at the preferred amount of up to 5% which is less than the at least 7% required by the claim. The argument is not persuasive.
While the amount does not overlap the claimed range it is so close as to make the claim obvious. Also, alternatively, in view of Isogawa, the polyolefin mold release agents which are known to include olefin copolymers and which can be present at up to 3% in the composition allows amounts of olefin copolymers in Sakai to overlap the claimed range.
Conclusion
Applicant's amendment necessitated the new ground(s) 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 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.
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/TAIWO OLADAPO/Primary Examiner, Art Unit 1771