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 Objections
Claim 27 is objected to because of the following informalities:
Claim 27, lines 2-3, “and the steel comprises iron and alloying elements” is generally redundant since by simply stating steel earlier in the claim the claim covers all forms of steel, which all forms steel at the very least are an alloy of iron and carbon and thus the recitation does not provide any new information but rather is making use of tautology.
Appropriate correction is required.
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 5, 7-9, 13, 15, 17, 20, 22, 26-29 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.
Claims 5 and 26 state 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 § 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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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.
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) 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.
Claim(s) 19 and 26 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hauvespre, DE102019201751.
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.
Regarding claim 26, 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.
IN THE ALTERNATIVE:
Claim(s) 1, 2, 5, 7, 13, 19, 22, 23 and 25-29 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.
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 19 and 22, Hauvespre in view of Lamson discloses that the first bearing assembly component comprises steel (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 25, Hauvespre in view of Lamson does not disclose a specific hardness value and thus does not disclose the hardness at the reaction layer is less than 50 HRC.
It would have been an obvious mater of design choice to set the surface hardness to a value less than 50 HRC or to select a precursor material with a surface hardness less than 50 HRC since Applicant has not disclosed that the hardness solves any stated problem or is for any particular purpose and it appears that the invention would perform its primary function of bearing a load regardless of what the hardness value is at a surface that is pressed onto the shaft. The surface in question is not the load bearing surface but rather the surface that is friction or press fit to the shaft, the hardness of this surface does not change the bearing function and in reviewing the disclosure there is no criticality for the specific hardness, in fact the disclosure covers hardness of 60 HRC or less, there is no criticality for the narrower range of 50 or less.
Regarding claim 26, 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 27, Hauvespre in view of Lamson discloses that the first bearing assembly component comprises steel (in Hauvespre both components are metal, see page 3 of the attached translation and in Lamson the elements are metal, specifically steel to which the process is applied, see column 3, lines 68-71), by disclosing steel Lamson further discloses that the steel comprises iron and alloying elements, 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 phosphatization process taught by Lamson is a process where the phosphoric acid attacks the microscopic iron particles on the steel surface and etches them away, this would leave behind any alloying elements).
Regarding claim 28, 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 29, Hauvespre in view of Lamson does not disclose a specific hardness value and thus does not disclose the hardness at the reaction layer is less than 50 HRC.
It would have been an obvious mater of design choice to set the surface hardness to a value less than 50 HRC or to select a precursor material with a surface hardness less than 50 HRC since Applicant has not disclosed that the hardness solves any stated problem or is for any particular purpose and it appears that the invention would perform its primary function of bearing a load regardless of what the hardness value is at a surface that is pressed onto the shaft. The surface in question is not the load bearing surface but rather the surface that is friction or press fit to the shaft, the hardness of this surface does not change the bearing function and in reviewing the disclosure there is no criticality for the specific hardness, in fact the disclosure covers hardness of 60 HRC or less, there is no criticality for the narrower range of 50 or less.
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.
Allowable Subject Matter
Claim 11 is allowed.
Claims 15 and 20, pending correction for the 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 filed July 10, 2026 have been fully considered but they are not persuasive.
With regards to the rejection under 35 USC 112a:
Applicant again points to paragraph 0051 for support for the depth limitation, however Applicant states that this paragraph “provides some support” for the limitation. Providing some support is not the standard for determining if something constitutes new matter. In this case, as pointed out above, the dimension in question in paragraph 0051 is directed to how much of the top layer of the ring is etched away, this, as defined in the specification is removal of a surface layer. If the etching removes the surface layer then the material left over defines the dimension of the ring and there is no depth into final ring that the etching extends into. A depth of a part is measured relative to surface, if the surface is being removed in its entirety as the specification suggests there is no actual depth of the reaction layer in the final product, the reaction reduces the dimension but does not define any particular depth into the surface. For this reason the rejection is maintained.
With regards to the prior art rejection:
Applicant argues that the treatment of “acid-formed” as a product by process limitation is incorrect and argues that the “structure implied by the ‘acid-formed’ limitation distinguishes Hauvespre over claim 1, however Applicant never states what that “implied” structure is. Applicant points out that knurling with a tool is different than dissolving or corroding with acid which is correct and related to the process not the resulting structure. Acid can be used in a locally applied manner to create a specific pattern in a similar manner as a groove can be cut or pressed into a surfacing using a tool and in a similar manner knurling can be carried out in a manner to create a specific pattern or can be randomly applied to create a general surface roughness increase. Applicant might be attempting to argue features similar to new claim 27 which would be acid forming in a manner that only dissolves or corrodes select materials within the base material, however this is not required by claim 1 and if added to claim 1 would overcome Hauvespre as applied under 35 USC 102 but would not overcome the rejection under 35 USC 103.
Applicant further argues that the rejection states that the surfaces, acid-formed or knurled surfaces, are roughened surfaces but argues that this is not recited in the claim and asks for clarification. The use of “roughened surface” is applied in a manner to explain the rejection/application of the art, as for the layers being indistinguishable, the issues is not that they could be distinguishable, the issue is the claim does not explicitly call for any distinguishing feature as the claim does not explicitly recite any structure. Acid forming can remove sections or layers from a surface depending on how its applied because the claim does not provide any further clarification the claim must be given the broadest reasonable interpretation which would be inclusive of any manner of acid forming the surface and is not limited to what Applicant discloses and is now attempting to claim in claim 27. It’s because of this the acid forming must be treated as a product by process recitation and again Applicant has previously stated that “acid-forming” has implied structure but never argues what that is, since acid can be used in various ways to treat surfaces, applied in specific manners to only some sections, dissolving or removing all of a surface layer or specifically attack one type of element in the layer, the claim is not limited to any specific structural composition that would be inherently included by simply stating “acid-formed”.
With regards to the application of Lamson, Applicant focuses the argument on the overall utility of Lamson to argue that it is not applicable and/or does not teach acid forming to a frictional engagement surface. However, the rejection is not relying on Lamson for the structure of the bearing but is only being relied upon for teaching a surface treatment that achieves a particular result, increased surface roughness, to aid in the interaction of the surface with another component of the assembly. In the case of Lamson the other component is a coating but this is not what the reference is relied on for and applicant basis the argument around the use of coatings in Lamson.
Applicant further argues that the motivation would only be correct in the limited case that a film of solid lubricant is one of the components like in Lamson, this is not the case and excludes the fundamental principle of “level of ordinary skill in the art”. In order to rough a surface to improve engagement with another object, regardless of what that other object ultimately is, one having ordinary skill in the art has the ability and knowledge to use any known process that would create a roughened or textured surface, this can be knurling, this can be etching, this could be cutting or grinding or even sanding. The fact that Lamson specifically disclose interaction with a coating does not preclude the underlying principle of treating the surface with acid to prep it to interact with the other components from being applicable to other applications that may not use a coating but would still look to improve the holding force between two interacting components.
Applicant further argues that the combination might suggest applying a coating or solid lubricant to Hauvespre, this is not what the rejection states, the rejection specifically addresses the method of treating the surface as a standalone object based on the teachings of Lamson and thus this argument is not consistent with the rejection itself and is unpersuasive for that reason.
Applicant further rephrases the previous argument that using Lamson to teach the surface roughening “does not necessarily (and therefore does not inherently) increase a coefficient of friction on a surface”.
Applicant again bases this argument on a hypothetical combination, using soft wax for example, however in the case of the rejection the primary reference is based on using roughened surfaces to engage and hold parts together, this does not get negated by changing the method of roughening the surfaces. The argument is based on the presumption 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, as previously pointed out, 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 two materials that regardless of the roughness would not be held together as this would be in direct opposition to the teachings themselves.
The remainder of the remarks present no additional argument and either state that because of Applicant’s belief that the combination is insufficient the dependent claims are allowable for that reason or in the case of claim 5 reference back to what is already stated and addressed above.
For the reasons stated above the rejection is maintained.
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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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617
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