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 .
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) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2000249142 (JP142), in view of Smith, USP 9,316,260.
Regarding claims 1, JP142 discloses a support assembly for a rotatable element (third figure in document provided by Applicant, all line citations correspond to the translation provided by Applicant), the support assembly comprising: a frame (38) having a mounting seat (38a) and a liner (37) of elastomeric material (rubber, see paragraph 0028 and 0059), co-molded on the mounting seat (“co-molded” is a product by process recitation, see MPEP 2113, the only specific structure this could require is that the liner is bonded to the frame, this is disclosed in paragraph 0060 of the prior art), and a bearing unit (1, specifically made of 2/3/4/5) disposed within the mounting seat of the frame, the bearing unit including a stationary radially outer ring (3) having a spherical surface (3b) radially outwardly delimiting the outer ring, wherein the liner (37) is radially interposed between the seat (38a) of the frame and the spherical surface (3b) of the radially outer ring.
JP142 discloses a one piece frame (38) and thus does not disclose that the frame comprises a first half-frame and a second half-frame, the frame halves forming the mounting seat.
Smith teaches that as an alternate to a one-piece frame the bearing can be housed in a two piece frame (48, see column 2, line 59-column 3 line 9 which discloses that one piece and two piece frames are known alternatives), the two piece frame comprising a first and a second half frame (left and right sides of frame 48 in figure 6) with the frame halves collectively forming the mounting seat.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify JP142 and configure the one piece frame into a known alternative two piece frame with two symmetrical halves, as taught and explicitly disclosed by Smith as an alternative to a one piece frame, since substituting between two known frames, one piece vs two piece, is within the level of ordinary skill in the art and provides the predictable result of simplifying mounting the bearing as no special structure or insertion openings are needed in a two piece frame to allow the bearing to be placed in the frame.
Regarding claim 2, JP142 discloses that the elastomeric material of the liner is a nitrile rubber (see paragraph 0028 which discloses one of the materials for the elastic element as nitrile rubber).
Regarding claims 3 and 11, JP142 does not disclose a specific thickness for the liner and thus does not disclose that radial thickness of the liner is between 0.45 mm and 0.55 mm.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to select any specific radial thickness for the liner, including between 0.45mm and 0.55mm, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. Furthermore, in the translation JP142 states that the purpose of using the liner is for suppressing vibrations, this is the same purpose of the instant application, however one having ordinary skill in the art would select any specific thickness for the liner based on the vibration characters they want or want to exclude in the product and based on the specific utility of the bearing itself.
Regarding claims 4 and 12, JP142 discloses that the frame is made of pressed steel (see paragraph 0059, “pressed” is a product by process limitation, see MPEP 2113, that does not limit the claim to any particular structure and the shape of the frame in JP142 could be made using any number of different methods).
Regarding claims 5 and 13, JP142 in view of Smith discloses that the bearing unit has an axis of rotation (horizontal axis through the inner ring in both references), and wherein the first and second half-frames are symmetrical with respect to an axis transverse to the axis of rotation of the bearing unit (the two halves taught by Smith are symmetrical about the vertical axis indicated by the dashed line in figure 6).
Regarding claims 6, 7, 8, 14, 15 and 16, JP142 in view of Smith discloses that the first half-frame comprises a flange portion and an annular portion, connected to the flange portion and radially internal with respect to the flange portion [clms 6 and 14] and the second half-frame comprises a flange portion and an annular portion, connected to the flange portion and radially internal with respect to the flange portion [clms 7, 8 and 15] (each half of the frame taught by Smith includes a flange 52 and an annular portion extending from the inner portion of the flange to form the bearing seat just like the assembly of the frame in the instant application), and wherein the two flange portions are axially brought together and made integral by means of locking elements [clms 8 and 16] (the two flanges contact and are ultimately held together by a locking element in the form of a bolt or screw that passes through 58 just like in the instant application).
Regarding claims 9 and 17, JP142 in view of Smith discloses that the second half-frame comprises a flange portion and an annular portion (52 and annular portion forming bearing seat), connected to the flange portion and radially internal with respect to the flange portion [clm 9], and wherein the two annular portions (of both frame halves) have corresponding spherical surfaces, radially internal, which together form the mounting seat of the bearing unit inside the frame [clms 9 and 17] (the two annular portions form the spherical seat for the outer ring in Smith just like in the instant application).
Regarding claims 10 and 18, JP142 in view of Smith results in a frame that is split in two parts, the liner of JP142 would also be split in two with each half bonded to the corresponding frame half and thus the combination results in the liner comprising a first portion and a second portion, symmetrical with respect to the transverse axis, and co-molded (again this is a product by process recitation, see MPEP 2113) respectively on the spherical surface of the annular portion of the first half-frame and on the spherical surface of the annular portion of the second half-frame.
Regarding claim 19, JP142 in view of Smith, as explained in rejection of claim 10 above, results in the first and second portions of the liner being bonded to the mating surface of the split frame (taught by Smith). Smith includes a spacing in the mating surface region at 84 and thus the first and second portions of the liner would be spaced apart by this region in the combination.
Regarding claim 20, JP142 in view of Smith discloses that the outer ring of the bearing unit has opposite first and second outer axial ends (left and right side of 3), the first half-frame member having a radially inner-most end disposed radially outward of the first outer axial end of the outer ring, the second half-frame member having a radially inner-most end disposed radially outward of the second outer axial end of the outer ring (as further discussed below in addressing the first argument by Applicant, the combination is teaching splitting the housing of JP142, the rest of the housing in JP142 remains the same with the radially inner most ends of the housing being on the outer surface of the outer ring and thus being radially outside the outer ring).
Response to Arguments
Applicant's arguments filed July 30, 2026 have been fully considered but they are not persuasive.
Applicant argues that JP142 does not disclose the co-molding requirement of the claim while acknowledging that claims must be distinguished from the prior art by structure rather than a process. The argument implies that the Examiner has not explained the structural equivalents, however it has been explained above that the result of co-molding are two materials that are bonded together and it is explained how the prior art addresses bonded materials. Applicant makes no argument that this is incorrect nor does Applicant make any clear statement on the record as to what they believe the structural result of co-molding is. What is the result of co-molding in terms of structure that would be more than just a bonding of the materials?
Applicant then states that the objective in JP142 is to suppress vibrations and argues that the rejection does not establish that the combination would preserve this feature, or in other words Applicant is representing the argument that modify JP142 to be a two part frame would destroy the reference. This argument was previously addressed and Applicant’s remarks do not address the counter argument made in the previous office action, as stated in the previous office action:
Applicant argues that modify JP142 to be a two piece frame would render the device unsatisfactory for its intended purpose. Applicant bases this conclusion on the presence of the legs in Smith.
First, in the combination above Smith is being used to teach the two part housing concept, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In this case Smith suggests to one skilled in the art that spherical type rolling bearings can be housed in split housings.
Second, even if the combination required the bodily incorporation of the frame as shown in Smith, including the “legs”, Smith clearly illustrates spacing between the legs and the outer ring 72 at the axially outer end of the outer ring, this spacing allows for the same relative movement that Applicant is arguing that the legs prevent.
Because of this the combination with Smith, specifically teaching the concept of a split housing, does not destroy or render JP142 unsatisfactory for its intended purpose.
Using a split housing does not change the functionality of the bearing or supporting liner and thus the bearing of JP142 would still operate the same and vibrations would be dampened. What functionality does Applicant believe is excluded when a split housing is used? Applicant references “geometry” but again this appears to be a bodily incorporation argument, the frame as shown in Smith is not being placed as it appears in the reference into the device of JP142 but rather Smith is teaching the concept of split housings. Applying the concept to JP142 renders the claimed invention obvious.
In addition, the argument also does not address the other portion of the rejection that points out that Smith actually acknowledges one piece frames members and split frames as being known alternatives. The fact that Smith states that these are known alternatives is further suggestive that switching between one and two pieces housings is not inventive.
Regarding claims 3 and 11, Applicant argues that in order to reject the claims as presented above the variable must be recognized as a result effective variable. However the rejection above is not relying on optimum value and In re Boesch (617 F.2d 272, 205 USPQ 215 (CCPA 198) but rather the rejection is relying on optimum range case law which is In re Aller (see citation above). The findings in In re Aller do not require the result effective variable standard. However, even if it did, changing the thickness of a dampening, elastic layer, provides the predictable result of adjusting the degree of movement and thus the amount of movement allowed within the assembly. In other words a thicker liner/dampening layer would allow for greater relative movement while a thinner layer would limit the amount of relative movement. The different thickness of material would provide different dampening characteristics and thus, while not necessary, would be a result-effective variable.
With regards to claims 10 and 18, Applicant argues that Smith does not disclose a liner and thus does not disclose the two liners required by the claim. The rejection above acknowledges this and concludes that this is a result of the combination as each half of the housing in JP142 when modified by Smith would be covered by the liner, this results in a first portion and a second portion connected to the respective frame half. Applicant’s argument further states that the claim requires separate liner portions, the claim does not require this, the claim states that “the liner comprises a first portion and a second portion” nothing in the claim states that the portions are independent and distinct from each other, even a one-piece part can be said to have a number of different portions, for example a line can be said to have end portions and a middle portion. The term “portion” does not require independent and distinct members.
Likewise the addition in claim 19 stating that the portions are spaced apart still does not preclude a larger device divided into any number of “portions” that are ultimately connected together. In the example of the line above, the middle portion would space apart the end portions. As explained in the rejection above the split housing as taught by Smith includes a spacing in the middle region at 84, the liner extending over this portion would be a middle portion of the liner, this middle portion would be between the two end portions.
Regarding claim 20 Applicant argues that the rejection does not specifically point to the specific location or part in JP142 and that “the fact that a portion of JP142’s housing is located radially outside some point of the outer ring does not establish the specific endpoint-to-endpoint relationship of the claim”. First the claim does not specifically require end points nor does the rejection select arbitrary points along the housing as it appears Applicant is implying. The claim states “axial ends” which is not limited to just a specific point and similar to “portions” above can include a region rather than a specific spot, however the rejection does not rely on this reasoning. Rather JP142 clearly shows that housing and outer ring have the relationship where the housing is, in its entity radially outside the outer ring in the same manner as in the instant application. Both the application and JP142 are spherical roller bearings where the housing and bearing outer ring meet along spherical surfaces and thus at the ends of the housing, which do not overlap along a radial direction with the outer ring in both the instant application and the prior art the ends of the housing are outward of the outer ring. This argument appears to be a continuation of the previous argument regarding claim 20 that focused on the legs shown in Smith, however as previously argued the legs of Smith are not being taught in the combination above, only splitting the housing is being taught, splitting the housing of JP142 does not change the relationship of the housing to outer ring illustrated in the reference. It is further noted that “disposed” outward does not require spacing if this is what Applicant is attempting to argue needs to be present, however even if it was the presence of the liner in JP142 would result in a spacing of the parts as the claim is comparing the frame to the outer ring.
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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