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 .
Drawings
The drawings are objected to because Sa is said to be a space between the key and a groove in both the specification and the claims however it is illustrated in figure 3 as between the key and the spring ring, Sa needs to be located in a region between the groove and the key (note that a space in this region is not shown in figure 3 but rather in figure 5 both spaces are not currently illustrated in the same figure as described in the specification and claim 14).
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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
Claim Interpretation
Based on the previously conducted interview the constant K, which Applicant previously named as the sliding coefficient, is not a sliding coefficient. In light of this disclosure, in the interview and the remarks dated July 28, 2025, this now makes 0.15 what appears to be an arbitrary multiplier which raises a number of additional concerns below.
Claim Objections
Claim 8 is objected to because of the following informalities:
Claim 8, the current drafting of the equation appears as if 0.15/m is using “m” as a variable while the intent is to indicate the units as discussed and agreed upon during the interview. In order to clarify this it is suggested that this portion of the claim read 0.15[1/m].
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 8-15 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.
As K is no longer in the equation and no longer a “sliding coefficient” the equation appears to just be a sizing equation that is actually not limiting the bearing to any particular size and is thus unduly broad and could be applicable to numerous conical journal bushings already manufactured. When K was previously a sliding coefficient of 0.15 this implied features such as material, cone angle and velocity but Applicant did not describe how these were used and what these were actually limited too thus necessitating the previous rejection under 35 USC 112(a). Now, 0.15 only appears to be an arbitrary value that Applicant has picked out as the specification provides no explanation of how the value was determined and this is not related to any other specific structural feature (not linked to material, cone angle, etc.). This makes 0.15 just a multiplier and if someone were to change this multiplier to 1 for example and then adjusted the bounds accordingly would they be infringing assuming all structure is the same?
Turning to the specification no specific examples are given and thus the equation appears to be a generic equation representing a genus that Applicant has not demonstrated that they have support for nor is Applicant first to invent a conical journal bearing as indicated by the evidence of record. The specification also states that the conical taper angle is critical in paragraphs 0009-0011, however 0.15 has not been linked to the cone angle at all and thus it is unclear/unknown if cone angle is actually being used in this equation. Assuming the angle is not used the only variables are a length (a), outer diameter (D) and an inner diameter (B), these are all generic dimensions that all manufactures adjust to make conical bushings fit the desired device. In fact this field of bearings does not have any sizing standards for this same reason. These journal bearings are merely sleeves that have sizes that are made to relate to a housing and journal or shaft end, the thickness (D-B) is not a critical aspect that influences the bearing function nor is the length. The critical aspect in a conical bearing is the cone angle, which again does not appear to be part of the equation based on Applicant’s current explanation of the value/K.
Paragraph 0021 appears to be stating that Applicant has not invented a new bearing but rather the inventors “have found out that journal bushes that fulfill the newly claimed design condition…achieve the object of the disclosure”. This statement by Applicant appears to be stating that all bearings that fulfill this equation are deemed to be good or desirable by Applicant and appears to be stating that the equation is one used to categorize these types of bearings. If this is the case what structure has Applicant actually invented? Developing a categorizing equation for previously existing devices is not patentable as it relates to an apparatus claim.
Ultimately the equation as currently presented appears to be an unduly broad sizing equation that is acting to define or categorize what Applicant deems as desirable ultimately covering a genus and possible all bearings within the field of endeavor. Applicant has not provided any working examples or dimensions nor has Applicant explained how this constant has been derived that would allow one having ordinary skill in the art to understand what Applicant has actually invented in terms of structure and thus fails the written description requirement as, other than sizing criteria, the equation does not appear to limit the bearing to any particular structural configurations. Without knowing how 0.15 was determined and what factors were used it is unknown what Applicant actually was in possession of at the time of filing. In light of the comments this also would be applicable to “3.6” in the equation assuming that 0.15 was not derived using some physical characteristics of the bearing. Where do the constants in the equation come from? Are they influenced by other aspects of the bearing? Were they developed using some form of a curve fit analysis, if so what where the characteristics of the journal bearing(s) used to determine the value? What new and novel structure has Applicant invented?
Turning to the specification for additional guidance it appears the intent is to prevent damage at the end of the roller (paragraph 0009), while the specifics that allow for this are not discussed or linked to the specific structure in any detail in the written description, it appears that this might be the result of using the cylindrical end that has its own cylindrical diameter represented by A. For the purpose of examination this shape as illustrated in Figure 1 will be addressed and the equation will be treated as a sizing equation.
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) 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bjork, USP 4,159,152.
Regarding claims 8 and 9, Bjork discloses a journal bush (26), the journal bush (26) being configured for use in an oil film bearing in a rolling mill stand for accommodating a conical roll journal of a roll (intended use recitation which does not define or limit the claim to any particular structure, however Bjork discloses that the bearing is an oil film bearing in a rolling mill, see at least the abstract), wherein the journal bush is elastically deformable under action of a rolling force exerted by the rolling mill stand (this recitation is defining a property of the bearing, all materials have some degree of elasticity and thus any journal bushing, regardless of the material will anticipate this limitation), and wherein the journal bush is cylindrically shaped on its outer side (along 36) with an outer running diameter [D], and wherein the journal bush has an inner conical longitudinal portion (see figure 4) that is conically shaped on its inner side over a cone length [a] with a large cone diameter (large side of conical portion) and a cone angle (the taper has a length and thus defines both a cone length and a cone angle) for accommodating the conical roll journal (14) of the roll, and wherein the inner conical longitudinal portion has lubrication grooves (82, 84, 86) on its inner side for introducing lubricant into an intermediate space between the inner side of the journal bush and an outer side of the conical roll journal.
Bjork does not disclose any specific size for the bearing and thus does not disclose that the outer diameter, the large cone diameter and the length of the cone portion satisfies the equation set forth in claims 8 and 9 (claim 9 just including a narrower range).
However, as noted above, this equation appears to be a sizing equation using three variables to define a desired size. It would have been an obvious matter of design choice to set the outer diameter, the thickness (D-B) and the length of the bearing to any desirable size and use any equation to define this sizing relationship, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
Regarding claim 10, Bjork discloses that a hollow-cylindrical shaped end portion (right side of figure 4) joins the inner conical longitudinal portion at a location of a smallest cone diameter (at the end of the tapered region) thereof, and wherein an inner diameter of the hollow-cylindrical shaped end portion is aligned with the inner conical longitudinal portion at the location of the smallest cone diameter (the cylindrical portion extends form the end of the conical portion and maintains the same diameter over the axial length).
Regarding claim 11, Bjork discloses that the journal bush (26) has a groove (34) on its inner side for partially accommodating a feather key (30).
Regarding claim 12, Bjork discloses a rolling mill stand (figure 1 and the description of the invention) comprising, at least one bearing housing (40), which is formed as an oil film bearing having a journal bush (26) according to claim 8; and at least one roll (16) having a roll journal (12) formed with a conical roll journal portion (14), wherein the journal bush is rotatably mounted with the roll journal in the bearing housing (keyed to the roll via 30 and thus rotates along with the roll within the housing 40).
Regarding claim 13, Bjork discloses a rolling mill stand (figure 1 and the description of the invention) comprising, at least one bearing housing (40), which is formed as an oil film bearing having a journal bush (26) according to claim 8; and at least one roll (16) having roll journals (12, one on each end) formed with a conical roll journal portion (14) and a cylindrical roll journal end portion (at 20) for being accommodated in the journal bush (26 overlaps both 14 and 20 and thus both regions are “accommodated” in the bush), wherein the journal bush is rotatably mounted with the roll journal in a bearing bush in the bearing housing (keyed to the roll via 30 and thus rotates along with the roll within the housing 40).
Response to Arguments
Applicant’s arguments with respect to claim(s) 8-15 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
USP 7377696, 6468194, 2955001 and 2582433 all show configurations where the journal includes a cylindrical portion that corresponds to a cylindrical portion the roll neck and would be applicable to at least claim 13.
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.
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.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617