Prosecution Insights
Last updated: April 19, 2026
Application No. 18/561,914

TAPERED ROLLER BEARING

Final Rejection §103§112
Filed
Nov 17, 2023
Examiner
PILKINGTON, JAMES
Art Unit
3617
Tech Center
3600 — Transportation & Electronic Commerce
Assignee
Ntn Corporation
OA Round
2 (Final)
70%
Grant Probability
Favorable
3-4
OA Rounds
2y 6m
To Grant
99%
With Interview

Examiner Intelligence

Grants 70% — above average
70%
Career Allow Rate
1098 granted / 1568 resolved
+18.0% vs TC avg
Strong +36% interview lift
Without
With
+35.6%
Interview Lift
resolved cases with interview
Typical timeline
2y 6m
Avg Prosecution
52 currently pending
Career history
1620
Total Applications
across all art units

Statute-Specific Performance

§101
0.3%
-39.7% vs TC avg
§103
37.2%
-2.8% vs TC avg
§102
22.0%
-18.0% vs TC avg
§112
36.7%
-3.3% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1568 resolved cases

Office Action

§103 §112
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 . Specification The specification is objected to as failing to provide proper antecedent basis for the claimed subject matter. See 37 CFR 1.75(d)(1) and MPEP § 608.01(o). Correction of the following is required: “space length” needs antecedent basis. Claim Objections Claim 1 is objected to because of the following informalities: Claim 1, line 8, the period after “surface” should be a comma. Claim 1, line 10 should end with a comma. Claim 1, lines 12-13, “in a radial direction of the inner ring, the large diameter side being positioned outside the small diameter side in the radial direction” is only defining features which are included by defining the bearing as a “tapered roller bearing” and are thus unnecessary and inherent recitations. This recitation is ultimately redundant as it is understood that this is what a tapered roller bearing includes and thus the phrasing can be deleted. Claim 1, lines 15 and 16 should be rephrased. Currently the “so that” recitation in line 16 based on the current order of the recitation appears to be related to the diameters of the parts not the position of the parts that is recited in lines 14-15. Applicant is using this phrasing to address a previous rejection under 35 USC 112 with regards to “large” and “small”. All tapered roller bearings that have flanges are understood to include a flange on the large diameter side and a flange on the small diameter side, the diameters of these flanges relative to each other is understood to have the relationship of one being smaller than the other. The whole clause can be rephrased to define a flange portion on the large diameter side and a flange portion on the small diameter side, this would remove the need to compare a large flange to a small flange to avoid the relative term issue previously presented. If Applicant elects this option the recitations of “small” and “large” prior to “flange portion” in the rest of the claim(s) needs to be removed and either the phrase “positioned on the large diameter side” or “positioned on the small diameter side” needs to be inserted so the claim(s) remains clear as to which flange is being referenced. Claim 1, line 18 should end with a comma. 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 1-5 and 9-14 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. Claim 1 has been amended to define a space length between the flanges “in the radial direction” and the tapered roller length (F) is shorter than this dimension. There is no support for this in the original filing, specifically the comparison as recited in the claim is an axial dimension relative to a radial dimension and the radial dimension between the flanges is in all cases smaller than the length of the roller. Applicant provided an annotated figure to explain this limitation, however in this figure the space length is in the same direction as the roller length, thus both dimensions would be in the axial direction for the comparison but this is not what is currently being claimed. The comparison of axial length to radial length as recited in claim 1 is not supported by the original disclosure. For the purpose of examination the claim will be assumed to be comparing axial dimensions which is what is being illustrated in the annotated figure in the remarks. The following is a quotation of 35 U.S.C. 112(b): (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. Claims 1-5 and 9-14 are 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 the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Regarding claim 1, the metes and bounds of the last two clauses are unclear. The “inner ring assembly” is defined earlier in the claim as being the assembly of the inner ring, the roller and the holder or in other words the configuration as shown in figure 12. The last two clauses are defining configurations based on “when” the pocket is facing upward or downward but it is unclear what configuration this would be and how that changes the assembly as shown in figure 12. When would this assembly depicted in figure 12 be considered “pocket facing upward” and “pocket facing downward” and how would the pocket arrangement change the assembly as depicted? Regardless of the direction of the pocket the assembly remains the same. Based on the last clause Applicant may be attempting to define what is shown in figures 15 and 16, however this movement is only capable of occurring in the non-assembled product, the claim is drawn to the finally assembled product and thus it is unclear how this relationship or function is further limiting the claimed invention. What structure does the last two clauses of the claim require the final assembled product to have? If this pivot feature is in fact part of the final product how does the roller pivot when the outer ring is present? As it is unclear how these last two clauses are structurally limiting the claim the claims will be addressed solely based on the positively recited structure earlier in the claim. The term “large scale equipment” in claim 14 is a relative term which renders the claim indefinite. The term “large scale equipment” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. While the claim provides an example of a wind power generator and sizes of the bearing this does not establish the metes and bounds of what is considered to be “large scale equipment.” Is this meant to limit the claim only to wind generators or can this include equipment smaller than that. It is further noted that wind power generators actually come in varies sizes including ones for smaller applications which further adding the indefiniteness of the term. 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, 2, 4, 5, 9 and 11-14, as best understood, is/are rejected under 35 U.S.C. 103 as being unpatentable over Inoue, WO2018092612, in view of Shimizu, WO2014136816, and further in view of JP2000-304038 (JP038). Regarding claim 1, Inoue discloses a tapered roller bearing comprising: an inner ring (11); an outer ring (12) concentrically arranged over an outer circumference of the inner ring; a plurality of tapered rollers (15) arranged between the inner ring and the outer ring; and a holder (17) including pockets (16) that hold the tapered rollers at a constant interval, each of the tapered rollers comprising a pair of end surfaces that face in an axial direction and a side surface that is positioned between the end surfaces around the axial direction, one of the end surfaces a smaller outer diameter being defined as an inner end surface, and the other end surface with a larger outer diameter being defined as an outer end surface (while the taper in Inoue is not illustrated in an exaggerated manner the reference clearly defines the bearing, in the title and abstract, as being a tapered roller bearing, the smaller and larger diameter ends of the roller are features of a tapered roller bearing, in this case the left side of figure 5 would correspond to the smaller diameter side) , wherein the inner ring (11) has: a raceway surface (13) on the outer circumference on which the tapered rollers (15) roll, wherein the raceway surface (13) has two opposing sides that are a large diameter side (right side of figure 5 for example) and a small diameter side (left side of figure 5) in a radial direction of the inner ring, the large diameter side being positioned outside the small diameter side in the radial direction (a larger diameter is always outside of smaller diameter when the diameters are arranged concentrically as is the case on an inner bearing ring); and a large flange portion (19) positioned on the large diameter side and a small flange portion (18) positioned on the small diameter side with a diameter smaller than that of the large flange portion so that the large flange portion and the small flange portion are place on opposite sides in the axial direction of the tapered rollers across the raceway surface (13), wherein the large flange portion faces the outer end surface of the tapered roller and the small flange portion faces the inner end surface of the tapered roller when the tapered rollers are held by the pockets (the small diameter side/inner end face of the roller is the left side figure 5 and this is opposed to the small diameter flange 18, the opposite side of figure 5 being the large diameter side of the assembly), the holder (17) is a segment holder divided into a plurality of segments (20a/20b) in a circumference direction, the segments each having: an opposing pair of a small-diameter-side arc-shaped portion (21) and a large-diameter-side arc-shaped portion (22) spaced apart at a predetermined interval; and a plurality of columnar portions (24) extending between the small-diameter-side arc-shaped portion (21) and the large-diameter-side arc-shaped portion (22), a space surrounded by two adjacent columnar portions, the small-diameter-side arc-shaped portion, and the large-diameter-side arc-shaped portion is defines the pocket (16) for containing one of the plurality of tapered roller, the inner ring, the tapered rollers, and the holder are put together to form an inner ring assembly (see figures 5, 12 and 17), which is incorporated into the outer ring (12, it is noted that how the part is assembled is a product by process recitation, see MPEP 2113), the tapered roller bearing has a connecting member (26) to be arranged in a ring shape on a large-diameter-side lateral-surface of each of the segments (corresponding to side 22), an engaging portion (33) for removably engaging the connecting member is provided on the large-diameter-side lateral-surface of the large-diameter-side arc-shaped portion of each of the segments to connect the segments (the wire is engaged in the claws, however since the claws are open the wire can be removed and is thus “removably” engaged), and a roller length of the tapered roller, which is measured in the axial direction, is shorter than a space length, which is measured between the small flange portion and the large flange portion in the radial direction (the length of the roller is smaller than the spacing between the flange, this is what allows the roller to fit between the two flanges, see rejection under 35 USC 112 above). Inoue does not disclose that the segments are provided with a guide claw on an outer-diameter side of each of adjacent columnar portions of each of the pockets to allow the tapered rollers to be inserted into the pockets from an inner-diameter side of the segments. Shimizu teaches a similar segmented tapered roller cage wherein the pockets/columnar portions are provide with guide claws (34) which create a narrower opening at the outer diameter side which allows for the rollers to be inserted into the pocket from an inner-diameter side which is wider. It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Inoue and add guide claws to the outer diameter side of the cage segments, as taught by Shimizu, since adding the known structure of guide claws provides the predictable result of preventing the rollers from falling out of the pocket in the radially outward direction and provide guiding surfaces that help prevent or limit additional relative movement of the roller within the pocket. Inoue also does not disclose that in a state in which adjacent segments are butted together and fixed by connecting the connecting member, when a diameter of the small flange portion of the inner ring is defined as M, an angle between the small flange portion of the inner ring and a straight line that is perpendicular to a central axis of the inner ring is defined as L, a chamfered width of a leading edge of the small flange portion is defined as K, and a distance, to the central axis, from a contact point C at which the small flange portion comes into contact with a corner formed within the inner end surface and the side surface of the tapered roller when the tapered roller is pivoted around a leading edge of the large flange portion of the inner ring is defined as y3, the condition (M/2)-K cos L> y3 is satisfied. First what the claim is requiring in terms of structure is a chamfer on the small diameter flange portion and the equation is stating that the chamfer terminates above the contact point of the roller with the small diameter flange portion. JP038 teaches that a flange (105) can be provided with a chamfer (107) and that the corresponding contact point is below the chamfer for the purpose of providing a flange shaped in a manner that prevents edge loading/contact if the roller skews during operation (see at least the translated abstract). JP038 further discloses that this feature, while illustrated in a cylindrical roller bearing, can apply to a tapered roller bearing, see page 16, paragraph beginning “Although the roller” and using this chamfer results in a roller contact point that must be below the outer surface of the flange as well as below the chamfer. It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Inoue and apply a chamfer to the small-diameter flange portion, as taught by JP038, for the purpose of providing a flange shaped in a manner that prevents edge loading/contact if the roller skews during operation. As a result of using the chamfer the structure of the combination would meet the equation requirements. NOTE: with regards to the last two clauses of the claim see the rejection under 35 USC 112(b) above. Regarding claim 2, Inoue discloses that ends of the connecting member (26) are connected together by a fastening portion or fastening member (40). Regarding claim 4, Inoue discloses that protruding portions with the engaging portion (33, the claws are part of a protruding structure of each segment) are provided on opposite end sides of the large-diameter-side lateral-surface of the large-diameter-side arc-shaped portion of each of the segments (one claw 33 is at each end of a corresponding segment). Regarding claim 5, Inoue discloses that in a state in which a tapered roller is arranged on the raceway surface of the inner ring with a large end surface of the inner ring facing downward, when an angle of the large flange portion of the inner ring that is in contact with an end surface of the tapered roller on the large-diameter side, with respect to a straight line that is perpendicular to a central axis of the inner ring is defined as I, a chamfered width of a leading edge of the large flange portion is defined as H, a distance from the central axis of the inner ring to a center of gravity of the tapered roller is defined as y1, and a diameter of the large flange portion is defined as J, the condition (J/2) -H cos I>y1 (in other words the equation is requiring that the center of gravity be within a radius of the flange from the axis minus a radial height of a chamfer, the additional structure set forth is a chamfer which Inoue discloses and when oriented the same the device positions the center of gravity within the location claimed, see annotated figure below, the figure is taken from figure 5 of Inoue and the figure has been flipped to match the orientation claimed). PNG media_image1.png 384 449 media_image1.png Greyscale Regarding claim 9, Inoue discloses that the segments (20a and 20b) are made of resin (see translation page 3, paragraph beginning “As shown in FIGS. 7 to 11”). Regarding claim 11, Inoue discloses that the connecting member (25) is divided into a plurality of connecting members, and ends of each of the divided connecting members are connected together respectively by the fastening portions or the fastening members (see translation page 6, paragraph beginning “For example, in the case” which discusses using additional members connected end to end to accommodate larger diameters). Regarding claim 12, Inoue discloses that a plurality of the fastening portions or the fastening members are arranged at equal intervals in the circumference direction ( in order to connect multiple connecting members together each end of the connecting member would have to include a different part of the fastening turnbuckle assembly, one end would have a threaded portion while the would have the turnbuckle outer element, this would be evenly spaced fastening portions just like the turnbuckle configuration illustrated in figure 4 in the instant application where only one is shown or by referencing the multiple elements as addressed in claim 11, Inoue would anticipate such a configuration as the divide connecting members can be arranged in any spacing arrangement, including evenly spaced). Regarding claim 13, Inoue discloses a small-diameter-side-connecting member (25) and a small-diameter-side-engaging portion (33 on the small diameter side) engaging with the small-diameter-side-connecting member are provided on the small-diameter-side lateral-surface of the small-diameter-side arc-shaped portion, and the segments arranged in a ring shape are connected by removably engaging the small-diameter-side-connecting member with the small-diameter-side-engaging portion (the connecting members can be removed). Regarding claim 14, Inoue discloses that the tapered bearing is designed for a large scale equipment including a wind power generator (see pages 1 and 2 of the translation, however what a bearing is designed for does not limit the claim to any particular structure). Inoue does not disclose that the tapered rollers have an average diameter of 40 mm or more and that the outer dimeter of the tapered roller bearing is 1 meter or more. It would have been an obvious matter of design choice to change the size of the tapered rollers and the overall diameter of the bearing to be 40 mm or more and 1 meter or more, respectively, at the time of effective filing, 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) and Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984). Claim(s) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inoue, WO2018092612, in view of Shimizu, WO2014136816, in view of JP2000-304038 (JP038), as applied to claim 1 above, and further in view of Yamada, USP 8,740,471. Regarding claim 3, Inoue while disclosing a connecting feature on the small diameter portion does not disclose that a wing portion protruding to a small-diameter side is provided on a small-diameter-side lateral- surface of the small-diameter-side arc-shaped portion, so that when the segments arranged in a ring shape is to be connected on a large-diameter side by the connecting member, a ring-shaped jig is fitted to the wing portion of the small-diameter side of the segments arranged in a ring shape. Yamada teaches a different mechanism for holding segmented cage elements together where on the small diameter side of the tapered bearing there is a jig (22) which accepts a wing portion (35) of the small-diameter side of the segments so that the segments are held together in the ring shape. It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Inoue and replace the small diameter side connecting member with any other previously known connecting/retaining member, including a jig that is arranged on a wing portion that protrudes from the small diameter side that helps hold the segments in the ring shape, as taught by Yamada, since substituting one known connecting/retaining structure for another provides the predicable result of aiding in holding the segments together and in the proper position, and in case of the small diameter side, prevents the segments from deflecting radially outward. Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Inoue, WO2018092612, in view of Shimizu, WO2014136816, in view of JP2000-304038 (JP038), as applied to claim 9 above, and further in view of Damato, USP 8,931,960. Regarding claim 10, while disclosing resin, Inoue is silent with regards to any specific type of resin and thus does not disclose that resin that forms the segment is carbon fiber-containing Poly Ether Ether Ketone [PEEK] or glass fiber-containing Poly Ether Ether Ketone [PEEK]. Damato teaches that retainer/holder of a bearing can be made of a PEEK material that contains carbon fiber (column 6, lines 33-47). It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Inoue and make the holder out of any previously known resin type material, including carbon fiber containing PEEK, as taught by Damato, 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. Response to Arguments Applicant's arguments filed October 3, 2025 have been fully considered but they are not persuasive. Applicant explains the additions in items J-L of the claim (see claim as presented in the remarks, J-L correspond to the last three clauses of claim 1), in this explanation Applicant discusses the presences of gaps, however no gaps are recited in the claim. While the claim, specifically item J, discusses different lengths, different lengths does not necessarily mean that there is a gap as different lengths can be measured at such a small increment that a gap may not appear between the parts, as it relates to the prior art, while the lengths between the raceway (between the flanges) and the roller might appear the same there must be some minute spacing so that the roller is not actually pressed into the inner ring and thus can easily roll. Applicant further explains the upward and downward facing recitations relative to the position of the inner ring in figures 7-14, however this is explained relative to the inner ring orientation while the claim defines the orientation with respect to the pocket and thus the explanation is not consistent with what is being claimed. Even if claimed relative to the orientation of the inner ring it would still remain unclear what the last two recitations of the claim would be structurally limiting the claimed invention to. Applicant further argues the application of the prior against the claims relative to items J-L, and again focuses on the gaps and the “when” clauses of the claim, these arguments are ultimately unpersuasive as they remain inconsistent with the claim (no gap claimed) and/or they do not aid in the understanding of what structural elements are being positively required, specifically with regards to the “when” clauses. With regards to the use of JP038 Applicant argues that height of the flange portion is too low to hold the roller compared with the outer diameter of the roller and thus the roller can’t be held when the configuration is flipped. This is again in reference to the “when” clauses that are unclear, however this is also in reference to the equation now recited in claim 1 (previously claim 6). With regards to the equation there is actual no boundaries for relative heights or diameters, etc., set forth that would clearly limit the height of the flange to any particular size. The equation is focused on a chamfer location/position, the Examiner explains this as “what the claim is requiring in terms of structure is a chamfer on the small diameter flange portion and the equation is stating that the chamfer terminates above the contact point of the roller with the small diameter flange portion”, Applicant has not argued that this assessment of the actual meaning of the limitation is incorrect and thus the rejection is maintained. In further reviewing of the equation there is no variable specifically linked to flange height and thus this argument also appears to not be supported by structure positively and clearly set forth by the claim. With regards to new claim 14, Applicant states that claim relates to “the size of the claimed bearing”. Recitations regarding the size of a bearing are not inventive as explained above. However it is noted that Inoue, see pages 1 and 2 of previously provided translation, that the invention applies to large machinery such as a wind power generator which is the same field of endeavor. 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. 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
Read full office action

Prosecution Timeline

Nov 17, 2023
Application Filed
May 01, 2025
Non-Final Rejection — §103, §112
Oct 03, 2025
Response Filed
Oct 15, 2025
Final Rejection — §103, §112 (current)

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Prosecution Projections

3-4
Expected OA Rounds
70%
Grant Probability
99%
With Interview (+35.6%)
2y 6m
Median Time to Grant
Moderate
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