Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they do not include the following reference sign mentioned in the description: 4.4. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character not mentioned in the description: 4.2. In addition, in fig. 4, reference numbers 4.3 and 5 do not include arrows. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112 (b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 11 recites the method in lines 1-2. There is insufficient antecedent basis for this limitation.
Rejections under 35 USC 1032
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 obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 7 and 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2020/0200223 (“Bachmann”) in view of USPGPub No. 2017/0321746 (“Yang”).
Regarding claim 7, Bachmann teaches a sensorized bearing ring (12e) (fig. 8), comprising: a metallic ring member (12e), a raceway layer (28e) formed on the metallic ring member … , and a sensor member (20e/22e) positioned between the metallic ring member and the raceway layer (fig. 8, ¶ [0014] & [0047]-[0049]).
Claim 7 also recites the raceway layer formed by use of a metallic wire Directed Energy Deposition (DED) operation and/or a metallic powder DED operation. Since claim 7 is a product claim, the patentability is based on the final product and not the steps of creating the product. Thus, if a prior art product is the same or similar as the claimed product, then the prior art anticipates the claim. In this case, Bachmann teaches to form the raceway layer via an additive manufacturing process, including selective laser melting which is a 3d printing method that melts metal powder layer by layer via directed energy. Thus, since the raceway layer of Bachmann is taught to be formed by melting metallic powder using directed energy, the structure of the raceway layer of Bachman is the same as that of the claimed invention.
Bachmann fails to explicitly teach a metallic or ceramic protecting member disposed between the sensor member and the raceway layer. However, this would have been obvious in view of Yang.
Yang is also directed to embedding a sensor into a bearing ring that is configured to measure strain or temperature (¶ [0002] & [0038]). The strain gauge 2 is encased by cladding 10 and by a metal material 4 formed out of steel and nickel (fig. 2, ¶ [0040]). This allows the sensor to be firmly fixed in the bearing and allows a thermal coupling between the sensor and bearing ring (¶ [0003] & [0043]).
In this case, each of Bachmann and Yang are directed to embedding a sensor into a bearing ring, wherein the sensor can comprise a strain gauge and/or temperature sensor (see ¶ [0008], [0015] & [0049] of Bachmann; see also ¶ [0002] & [0038] of Yang). Since steel is 3D printed over the sensor unit of Bachmann, one of skill in the art will appreciate that a protection layer is provided to protect electronic components from the molten steel. Nonetheless, Yang teaches one of skill in the art that encasing the sensor in a metallic material allows for a thermal coupling between the ring and sensor, and allows for a firm fit in order to better measure strains. Thus, it would be obvious to encase the sensor of Bachmann in a steel and/or nickel material in order to provide a good connection between the sensor unit and the raceway, and to allow a thermal coupling between the raceway and the sensor unit.
Given the above modification, the metal that encases the sensor reads on “protecting member” since the metal will provide protection for the sensor both before assembly when the sensor is exposed during shipping and handling, and after being placed in the ring member (for example, protecting the sensor from molten metal during 3D printing of the raceway layer, and during operation of the bearing).
Claim 9 recites the raceway layer is formed of any of a Co-based alloy, a Ni-based alloy, or a Fe-based alloy. Bachmann teaches the bearing ring consisting of a bearing steel (¶ [0014]), which are Fe-based alloys.
Claim 10 recites a bearing comprising a sensorized bearing ring according to claim 7. As detailed in the rejection to claim 7 above, Bachmann in view of Yang teach the bearing ring of claim 7. In addition, the bearing ring is part of a bearing 10e (Bachmann, fig. 8, ¶ [0047]).
Claim 11 recites a bearing comprising a sensorized bearing ring manufactured by the method comprising the steps of: providing a metallic ring member, applying a sensor member on the metallic ring member, prior to applying a raceway layer, providing a metallic or ceramic protecting member to cover the sensor member, and applying the raceway layer onto the metallic ring member and the sensor member by use of a metallic wire Directed Energy Deposition operation and/or a metallic powder DED operation.. The examiner notes that the structure of the bearing ring manufactured by the above method results in the bearing ring as claimed in claim 7. Bachmann in view of Yang teach a bearing ring formed by the process of claim 11 for the same reasons detailed in the rejection to claim 7, above. In addition, the bearing ring is part of a bearing 10e (fig. 8, ¶ [0047] of Bachmann). The examiner notes that the step of providing a metallic or ceramic protecting member can happen any time before the step of applying the raceway layer. As detailed in Yang, the metallic protecting member is applied to cover the sensor prior to applying the sensor member to the metallic ring member.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Bachmann as applied to claim 9 above, and further in view of AST Bearings, Bearing Materials, Screen shot taken on January 5, 2018, available at https://www.astbearings.com/bearing-materials.html (“NPL”).
Regarding claim 14, Bachmann fails to explicitly teach the Fe-based alloy is stainless steel. However, this would have been obvious in view of NPL.
NPL is directed to bearings, and specifically to common materials bearing parts are formed out of (page 1, wherein all references to NPL refer to the document submitted with the Office action mailed on August 18, 2025). NPL teaches a variety of stainless steels are known to be used to form bearings and that stainless steels provide good corrosion resistance and can operate at higher temperatures with respect to other materials (pages 2-3).
In this case, Bachmann teaches a bearing ring made out of steel. NPL teaches common steels that bearing rings can be formed out of, including a variety of stainless steels. Further, one of skill in the art appreciates that stainless steels can be additively manufactured. Thus, to provide a bearing with good corrosion resistance, it would be obvious to form the bearing ring and raceway of Bachmann out of stainless steel.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Bachmann in view of USPGPub No. 2015/0219148 (“Wemhoener”).
Regarding claim 15, Bachmann teaches a sensorized bearing ring (12e) (fig. 8), comprising: a metallic ring member (12e), a raceway layer (28e) formed on the metallic ring member … , and a sensor member (20e/22e) positioned between the metallic ring member and the raceway layer (fig. 8, ¶ [0014] & [0047]-[0049]).
Claim 15 also recites the raceway layer formed by use of a metallic wire Directed Energy Deposition (DED) operation and/or a metallic powder DED operation. Since claim 7 is a product claim, the patentability is based on the final product and not the steps of creating the product. Thus, if a prior art product is the same or similar as the claimed product, then the prior art anticipates the claim. In this case, Bachmann teaches to form the raceway layer via an additive manufacturing process, including selective laser melting which is a 3d printing method that melts metal powder layer by layer via directed energy. Thus, since the raceway layer of Bachmann is taught to be formed by melting metallic powder using directed energy, the structure of the raceway layer of Bachman is the same as that of the claimed invention.
Bachmann fails to explicitly teach the raceway layer is formed of any of a Co-based alloy or a Ni-based alloy. However, this would have been obvious in view of Wemhoener.
Wemhoener is directed to a bearing system (Abstract, ¶ [0001]). Wemhoener teaches that the inner and outer rings 50/56, which also include the raceways (figs. 1 & 2c), can comprise or consist of a variety of materials including steels, stainless steel, nickel/cobalt base alloy (e.g. MP159), nickel base alloy (e.g. Inconel 718), cobalt base alloy (e.g. Stellite 6, Stellite 19, Stellite 190, Tribaloy 800), etc. (¶ [0032]-[0033] & [0037]-[0038]).
In this case, Bachmann teaches a bearing ring made out of steel. However, one of skill in the art appreciates that the ring and raceway can be made out of a variety of materials depending upon the preference of a designer. Wemhoener teaches a variety of known materials that can form the rings and raceways, including nickel/cobalt base alloy (e.g. MP159), nickel base alloy (e.g. Inconel 718), cobalt base alloy (e.g. Stellite 6, Stellite 19, Stellite 190, Tribaloy 800). Further, one of skill in the art appreciates that these materials such as Inconel 718 can be additively manufactured. Inconel 718 is also known for its high strength even at high temperatures and its corrosion resistance. Thus, to provide a bearing with good corrosion resistance and high strength at high temperatures, it would be obvious to form the bearing ring and raceway of Bachmann et al. out of Inconel 718.
Response to Arguments
Applicant's arguments filed December 18, 2025 (“the remarks”) have been fully considered but they are not persuasive. Each of applicant’s remarks is set forth, followed by examiner’s response.
On pages 8-10 of the remarks, Applicant argues that Bachmann in view of Yang fail to teach claim 7 because (i) Bachmann clearly teaches the sensor being provided without a protecting member—thus teaching away from a protecting layer, and (ii) Yang’s motivation for encasing the sensor is different from Applicant’s motivation (e.g. Yang’s motivation is to make the sensor functional and better determine thermal and strain measurements).
With respect to (i), the omission of a “protecting member” in Yang is not a teaching that it does not have one. Sensors commonly come in housings to protect delicate components of the sensors. And the examiner still believes one of skill in the art will infer that the sensor of Yang comprises a housing encasing the sensing mechanism to protect the sensor and electronic components therein from molten steel since molten steel would destroy most electronics (including the types of sensors taught by Bachmann). Bachmann also teaches the sensor being metallurgically connected to the bearing ring (see ¶ [0013]), wherein “metallurgically connected” means a bond between at least two metallic components.
However, the rejection is not reliant on Bachmann teaching a protecting member since Yang provides motivation to encase a sensor in metal. Bachmann does not teach away from a protecting member since Bachmann does not explicitly discourage use of a “protecting member”. At best, Bachmann is silent as to a protecting member, and possibly suggests a “protecting member” in order to metallurgically connect the sensor to the bearing ring.
With respect to (ii), a rejection does not need the same motivation to modify a reference (see MPEP 2144(IV), e.g. “The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant.”). While Yang doesn’t explicitly teach encasing a sensor in metal to provide a “protecting member”, encasing a sensor in metal will provide protection for the sensor both before assembly when the sensor is exposed during shipping and handling, and after being placed in the ring member (for example, protecting the sensor from molten metal during 3D printing of the raceway layer, and during operation of the bearing). Thus, while the reasoning in the rejection may be different from Applicant’s reasoning, the result is encasing the sensor in metal which will protect the sensor.
To differentiate the protecting member of claim 11 from the cited art the examiner recommends amending claim 11 so that the step of applying a sensor member happens before providing the metallic or ceramic protecting member. Since Yang teaches to encase the sensor in the “protecting member” it would not appear practical to encase the sensor after the sensor has been applied on the metallic ring member.
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 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 Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”