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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 15, 2026 has been entered.
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 1-2, 4-5, 7-9, 12-15, 17-24 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.
The amendment to claims 1 and 5 states that the reaction layer has a “depth” of less than 2 micrometers. Applicant points to paragraph 0051 for support for this new limitation, however the paragraph and the rest of the disclosure does not state a particular depth. What paragraph 0051 is stating is that the process used to make the reaction layer does not change the overall dimension of the inner ring or changes the dimension by less than 2 micrometers. The overall dimension of the inner ring is not related to the specific depth of the reaction layer and thus the addition to the claim defining a specific depth or depth range for the layer is new matter.
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, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hauvespre, DE102019201751.
Regarding claim 1, Hauvespre discloses a bearing assembly comprising: a first bearing assembly component (ring 5 or pulley 2, the pulley forming a bearing housing) having a mechanically finished contact surface (this is a product by process recitation, see MPEP 2113, in a final product all surfaces are finished to some degree, 16 or 31 are both contact surfaces which have been formed and thus are finished surfaces), a second bearing assembly component (other one of 5 or 2) having a counter contact surface (other surface of 16 or 31), the second bearing assembly component being rotationally fixed relative to the first bearing assembly component by direct frictional engagement between the contact surface and the counter contact surface (the knurled surface 37 and 38 of the outer ring 5 increases the friction between the parts holding the parts together), wherein the contact surface includes an acid-formed reaction layer (acid-formed is a product by process recitation which is only limited to the final structure, see MPEP 2113, in this case the structure is a roughened surface, the knurled surfaces 37 and 38 are roughened surfaces as well and thus structural the prior art has the same feature) having a coefficient of friction greater than a coefficient of friction of a material of the first bearing assembly component without the reaction layer (the knurling roughens the surface increasing the friction of the precursor material), and wherein the second bearing assembly component comprises a shaft or a bearing ring or a hub or a housing (in Hauvespre either element can be considered the second bearing assembly component and in this case they include a bearing ring and a housing element). Also see alternative rejection below.
Hauvespre further discloses a depth of the knurling/reaction layer being in the range of 0.1-1mm and thus does not disclose a depth of less than 2 micrometers.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to set a particular depth of the knurling layer to any range, including less than 2 micrometers, 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, selecting of particular knurling parameters is conditional on a number of different factors, including but not limited to the material that the knurling is intended to engage with, adjusting depth and other features of knurling to arrive at an optimum holding force between the objects is within the level of ordinary skill in the art.
Regarding claim 18, Hauvespre discloses that the first bearing assembly component comprises metal (in Hauvespre both components are metal, see page 3 of the attached translation disclosing that the pulley body/housing is sheet metal and that the bearing ring can be made from a metal tube shank).
Regarding claim 19, while disclosing metal (see rejection of claim 18 above), Hauvespre does not specifically disclose the use of steel.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Hauvespre and make the metal components steel, 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.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hauvespre, DE102019201751, in view of Yamashita, USP 4,792,244.
Regarding claim 4, Hauvespre, while disclosing a bearing assembly with an inner ring and a shaft does not disclose that the first bearing assembly component comprises the bearing inner ring, wherein the contact surface is a radially inner surface of the bearing inner ring and wherein the second bearing assembly comprises the shaft.
Yamashita teaches that a knurling feature (6) can also be included on an inner peripheral surface of a bearing inner ring (2) with a second bearing component which engages with the knurling being a shaft (5).
It would have been obvious to one having ordinary in the art at the time of effective filing to modify Hauvespre and use the knurled feature on any mating surface arrangement, including on an inner periphery surface of the inner ring with the second component that mates therewith being the shaft, as taught by Yamashita, since apply the knurling feature to other contact areas provides the predictable result of increasing the holding force between the parts and thus preventing unwanted movements such as creep.
IN THE ALTERNATIVE:
Claim(s) 1, 2, 5, 7, 13, 18, 19 and 21-24 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hauvespre, DE102019201751, in view of Lamson, USP 3,001,838.
Regarding claim 1, Hauvespre discloses a bearing assembly comprising: a first bearing assembly component (ring 5 or pulley 2, the pulley forming a bearing housing) having a mechanically finished contact surface (this is a product by process recitation, see MPEP 2113, in a final product all surfaces are finished to some degree, 16 or 31 are both contact surfaces which have been formed and thus are finished surfaces), a second bearing assembly component (other one of 5 or 2) having a counter contact surface (other surface of 16 or 31), the second bearing assembly component being rotationally fixed relative to the first bearing assembly component by direct frictional engagement between the contact surface and the counter contact surface (the knurled surface 37 and 38 of the outer ring 5 increases the friction between the parts holding the parts together), wherein the contact surface has a coefficient of friction greater than a coefficient of friction of a material of the first bearing assembly component without the reaction layer (the knurling roughens the surface increasing the friction of the precursor material), and wherein the second bearing assembly component comprises a shaft or a bearing ring or a hub or a housing (in Hauvespre either element can be considered the second bearing assembly component and in this case they include a bearing ring and a housing element).
Hauvespre does not disclose that the contact surface includes an acid-formed reaction layer that creates the roughened or knurled surface feature.
Lamson teaches that in a bearing assembly that the contact surfaces can include an acid-formed reaction layer (28, see column 4, lines 24-29 disclosing a method for making the surface can include acid etching, the result of this is an acid formed layer) having a coefficient of friction greater than a coefficient of friction of a material of the first bearing assembly component without the reaction layer (the acid etching roughens the surface increasing the friction of the precursor material) for the purpose of improving the anchoring between connected components in a bearing assembly (see column 4, lines 10-33).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Hauvespre and roughen the surface using any previously known process, including acid etching, as taught by Lamson, for the purpose of improving the anchoring between connected components in a bearing assembly. Furthermore, using different known methods to roughen a surface provides the same predictable result of creating a texturing that allows for there to be a greater holding force (friction) between the two parts when they are assembled together.
Hauvespre further discloses a depth of the knurling/reaction layer being in the range of 0.1-1mm and thus does not disclose a depth of less than 2 micrometers. Lamson is silent with regards to any particular depth of the knurling/texturing
It would have been obvious to one having ordinary skill in the art at the time of effective filing to set a particular depth of the knurling layer to any range, including less than 2 micrometers, 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, selecting of particular knurling parameters is conditional on a number of different factors, including but not limited to the material that the knurling is intended to engage with, adjusting depth and other features of knurling to arrive at an optimum holding force between the objects is within the level of ordinary skill in the art.
Regarding claim 2, Hauvespre in view of Lamson discloses that the reaction layer has a hardness lower than a hardness of the material of the first bearing assembly component beneath the reaction layer (the instant application discloses this as a result of roughening the surface, the same would occur in Hauvespre in view of Lamson, the roughened surface includes a number of voids on the outer layer which decreases the structural strength or hardness of the material at the outer layer leaving the material beneath the roughened layer harder than that of the roughened surface).
Regarding claim 5, Hauvespre discloses a method for manufacturing a bearing assembly component comprising: mechanically finishing a contact surface (37/38) of a first bearing assembly component (5, when a part is made it is “mechanically finished”, however the knurled surfaces 37 and 38 are mechanically made surfaces), increasing a coefficient of friction of the contact surface by generating a reaction layer on the contact surface (providing the knurled surface increases the friction), mounting the first bearing assembly component (5) to a second bearing assembly component (2) with the contact surface in direct frictional engagement with a counter-contact surface of the second bearing assembly component, wherein the second bearing assembly component comprises a housing (the pulley body forms a housing for the bearing).
Hauvespre does not disclose that roughened surfaces is formed by applying acid to the contact surface.
Lamson teaches a method of roughening a bearing element contact surface that includes increasing a coefficient of friction of the contact surface by generating a reaction layer on the contact surface by applying an acid to the contact surface (acid etching to rough the surface, the etching increases the frictional coefficient of the surface, see column 4, lines 24-29) for the purpose of improving the anchoring between connected components in a bearing assembly (see column 4, lines 10-33).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Hauvespre and create the knurled or textured surfacing using any other previously known method, including acid etching, as taught by Lamson, for the purpose of improving the anchoring between connected components in a bearing assembly and since using different known methods to roughen a surface provides the same predictable result of creating a texturing that allows for there to be a greater holding force (friction) between the two parts when they are assembled together creating the surface using tooling process (knurling) or an etching process still results in a roughened surface that performs the same function.
Hauvespre further discloses a depth of the knurling/reaction layer being in the range of 0.1-1mm and thus does not disclose a depth of less than 2 micrometers. Lamson is silent with regards to any particular depth of the knurling/texturing
It would have been obvious to one having ordinary skill in the art at the time of effective filing to set a particular depth of the knurling layer to any range, including less than 2 micrometers, 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, selecting of particular knurling parameters is conditional on a number of different factors, including but not limited to the material that the knurling is intended to engage with, adjusting depth and other features of knurling to arrive at an optimum holding force between the objects is within the level of ordinary skill in the art.
Regarding claim 7, Hauvespre in view of Lamson discloses that the acid includes a carboxylic acid, a phosphoric acid, or a nitric acid (Lamson discloses “phosphatizing” in column 4, lines 24-29, this is a process that includes using phosphoric acid to change the properties of a metal surface).
Regarding claim 13, Hauvespre in view Lamson discloses that generating the reaction layer occurs after a last mechanical processing of the contact surface (the ring in both references must first be formed, a mechanical process, as noted above the claims are not specific with regards to this process and all manufactured parts are subjected to some form of mechanical process, and after the product is formed the product is subjected to the acid to create the knurled or textured surface, thus prior to the acid any mechanical process is the last mechanical process).
Regarding claims 18, 19, 21 and 22, Hauvespre in view of Lamson discloses that the first bearing assembly component comprises metal [clms 18 and 21] and more specifically steel [clms 19 and 22] (in Hauvespre both components are metal, see page 3 of the attached translation and in Lamson the elements are metal, specifically steel, see column 3, lines 68-71).
Regarding claim 23, Hauvespre in view of Lamson discloses that the first bearing assembly component comprises steel and the steel comprises iron and alloying elements (steel is an alloyed version of iron, in Hauvespre both components are metal, see page 3 of the attached translation and in Lamson the elements are metal, specifically steel, see column 3, lines 68-71), and wherein a composition of the reaction layer includes a lower percentage of iron and a higher percentage of alloying elements than a composition of a portion of the first bearing assembly away from the reaction layer (the acid used in the instant application attacks the iron in the steel based on the disclosure, Lamson discloses that the same type of acid can be used, see rejection of claim 7 above, thus the resulting combination when acid treated will remove iron from the surface layer resulting in the claim limitation being an obvious result of the process).
Regarding claim 24, Hauvespre in view of Lamson disclosing applying acid to form the finished surface and then neutralizing the acid (claim 24 is not specific with how the acid is neutralized, like in claim 12, in order to stop the reaction that creates the surface in Lamson the acid must be neutralized on the surface of the part).
However, Hauvespre in view of Lamson does not disclose the reaction time for the acid and thus does not specifically disclose a range of 30-90 seconds.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Hauvespre in view of Lamson and carry out the acid etching process for any desired length of time to achieve a particular depth, including 30-90 seconds, since it has been held that where the general conditions of a claim are disclosed (bearing with textured surface and texturing bearing surfaces using acid) in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 4 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hauvespre, DE102019201751, in view of Lamson, USP 3,001,838, in view of Yamashita, USP 4,792,244.
Regarding claims 4 and 17, Hauvespre in view of Lamson, while disclosing a bearing assembly with an inner ring and a shaft does not disclose that the first bearing assembly component comprises a bearing inner ring [clm 4 and 17], wherein the contact surface is a radially inner surface of the bearing inner ring and wherein the second bearing assembly comprises the shaft [clm 4].
Yamashita teaches that a knurling feature (6) can also be included on an inner peripheral surface of a bearing inner ring (2) with a second bearing component which engages with the knurling being a shaft (5).
It would have been obvious to one having ordinary in the art at the time of effective filing to modify Hauvespre in view of Lamson and use the knurled/roughened feature on any mating surface arrangement, including on an inner periphery surface of the inner ring with the second component that mates therewith being the shaft, as taught by Yamashita, since apply the knurling/roughened feature to other contact areas provides the predictable result of increasing the holding force between the parts and thus preventing unwanted movements such as creep.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hauvespre, DE102019201751, in view of Lamson, USP 3,001,838, as applied to claim 5 above, and further in view of Kelsey, USP 9,003,663.
Regarding claim 8, while disclosing acid, and specifically phosphoric acid (see rejection of claim 7 above), Hauvespre in view of Lamson does not disclose that the acid comprises oxalic acid.
Kelsey teaches that acid cutting of a bearing can be done with either phosphoric acid or oxalic acid (see column 4, lines 64 and 65).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Hauvespre in view of Lamson and use oxalic acid as an alternative to the disclosed phosphoric acid, since the use of known alternative acids, as demonstrated by Kelsey, is not inventive but rather a matter of routine substituting of one known acid for another to achieve the same results of etching a bearing surface.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hauvespre, DE102019201751, in view of Lamson, USP 3,001,838, as applied to claim 5 above, and further in view of Ishii, CN 111051552.
Regarding claim 9, while disclosing acid, and specifically phosphoric acid (see rejection of claim 7 above), Hauvespre in view of Lamson does not disclose that the acid comprises a nital etching acid mixture.
Ishii teaches that acid cutting of a bearing can be done using a nital etching acid mixture/alcoholic nitric acid mixture (see previously attached translation, top of page 8).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Hauvespre in view of Lamson and use a nital etching acid mixture/alcoholic nitric acid mixture, since the use of known etching acids, as demonstrated by Ishii, is not inventive but rather a matter of routine substituting of one known acid for another to achieve the same results of etching a bearing surface.
Claim(s) 12 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hauvespre, DE102019201751, in view of Lamson, USP 3,001,838, as applied to claim 5 above, and further in view of Liu, USP 3,771,977.
Regarding claim 12, Hauvespre in view of Lamson, while disclosing acid etching, does not disclose that after generating the reaction layer, applying an alkaline solution and/or water to the contact surface.
Liu teaches that after an acid etching process the bearing element has water applied to the surface of the bearing element (see column 5, steps 2, 4, 5, 7, 8, 10, 11 and 13 which all disclose rinsing with water that occurs after acid etching in step 1).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Hauvespre in view of Lamson and subject the bearing ring to water after the etching step, as taught by Liu, for the purpose and predictable result of removing/neutralizing the acid to prevent further etching of the surface from occurring. Washing a part after an acid treatment is a common step that removes the chemical from the surface preventing any further reaction.
Regarding claim 14, Hauvespre in view of Lamson, while disclosing acid etching, does not disclose that after generating the reaction layer, drying and/or preserving the contact surface.
Liu teaches that after an acid etching process the bearing element has water applied to the surface of the bearing element (see column 5, steps 2, 4, 5, 7, 8, 10, 11 and 13 which all disclose rinsing with water that occurs after acid etching in step 1), washing or rinsing the product prevents any further reaction which preserves the contact surface in its current state, the “preserving” step is not defined or limited to any particular process and can include washing to prevent any further degradation to the contact surface.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Hauvespre in view of Lamson and subject the bearing ring to water after the etching step, as taught by Liu, for the purpose and predictable result of removing/neutralizing the acid to prevent further etching of the surface from occurring, thus preserving the surface. Washing a part after and acid treatment is a common step that removes the chemical from the surface preventing any further reaction.
Allowable Subject Matter
Claim 11 is allowed.
Claims 15 and 20, pending correction for the newly introduced new matter, would remain objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claims 11 and 20, the prior art of record does not teach nor render obvious a method that includes using an acid mixture that includes copper and/or selenium to create the reaction layer on the bearing element.
Regarding claim 15, the prior art of record does not teach nor render obvious the combination of the mechanically finished surface including a blackening layer and the step of generating the reaction layer includes removing the blackening layer. In other words the finished surface is subject to a blackening treatment which is later removed via the generation step for the reaction layer.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 and the previous rejection under 35 USC 102 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument as the newly added limitation has been found to be obvious.
With regards to the combination using Lamson to teach the surface roughening Applicant argues that roughening the surface “does not necessarily (and therefore does not inherently) increase a coefficient of friction on a surface”.
Applicant bases the argument that when placing different surfaces in contact with each other the coefficient of friction can be different and thus while a surface is roughened it may not have a better holding force or coefficient of friction. However this argument is contrary to the concept behind both applied references which use textured surfaces to better hold to parts together. The argument is ultimately one of bodily incorporation and 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 the prior art clearly teaches the concept of roughening surfaces to increase holding force, while specific materials might come into play specific materials are not recited in the independent claims and one skilled in the art would not select to materials that regardless of the roughness would not be held together as this would be in direct opposition to the teachings themselves.
With regards to claim 5, Applicant appears to be arguing that “generating a reaction layer” has not been given patentable weight when in fact it has. The primary reference shows a textured surface thus a layer has been generated as generating is not specific to any process. The teaching reference to Lamson then teaches forming a texture surface, or generating, using acid, this combination renders the claim obvious since the textured surface in primary reference is being modified to be made by acid etching and is thus being “generated” in the combination.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Olszewski can be reached at 571-272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES PILKINGTON/ Primary Examiner, Art Unit 3617