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 Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) 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.
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) 15 and 17 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Edelmann (US 6109788 A)
Regarding claim 15, Edelmann discloses (in figs. 1-2 and annotated fig. 3) a rolling element guide rail (14) for a linear rolling bearing (fig. 1), comprising a profile body (body of 14) on which at least one rolling element running surface (18) extends along a straight line of movement with a constant profiling and on which two guide surfaces (GS1, GS2) each extend along the straight line of movement with a constant profiling, wherein a fracture edge (BE) is formed on at least one of the guide surfaces (GS1, GS2), wherein the fracture edge (BE) is a result of a bending force applied to a panel, wherein fracture occurs in the area of a fracture groove (groove between the BEs when the rail elements are connected. This limitation is considered product by process as where the fracture occurs is not linked to the final product of the rail element itself. This is in reference to the intermediate configuration when all these rail elements are in a strip, but the claims are not drawn to the intermediate product.)
[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). As set forth in MPEP 2113, product by process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps.
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Regarding claim 17, Edelmann discloses the rolling element guide rail according to claim 15, wherein the profile body (body of 14) is made of a metallic material with a hardness greater than 54 HRC or of a ceramic material (col. 4, lines 21-24 discloses that profile body is made of steel, which is the same material as the instant application).
Alternative rejection #1
This rejection is being made based on the assumption that the bending and fracturing of the part results in some distinct structure such as a broken or jagged edge, while it is not agreed that this is necessarily the case and it is believed that the recitation is truly a product by process recitation, see rejection above, in anticipation of such a feature being claimed the rejection below is being made.
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) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Edelmann (US 6109788 A) in view of Brady (US 0658598 A).
Regarding claim 15, Edelmann discloses (in figs. 1-2 and annotated fig. 3) a rolling element guide rail (14) for a linear rolling bearing (fig. 1), comprising a profile body (body of 14) on which at least one rolling element running surface (18) extends along a straight line of movement with a constant profiling and on which two guide surfaces (GS1, GS2) each extend along the straight line of movement with a constant profiling, wherein a fracture edge (BE) is formed on at least one of the guide surfaces (GS1, GS2) but does not disclose the fracture edge is a result of a bending force applied to a panel, wherein fracture occurs in the area of a fracture groove.
Brady teaches the fracture edge is a result of a bending force applied to a panel, wherein fracture occurs in the area of a fracture groove for the purpose of keeping the elements together until separating the elements is needed (page 3, col. 1 lines 9- col. 2 lines 15)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the fracture edge is a result of a bending force applied to a panel, wherein fracture occurs in the area of a fracture groove, as taught by Brady, in the rolling element guide rail of Edelmann for the purpose of keeping the elements together until separating the elements is needed (page 3, col. 1 lines 9- col. 2 lines 15).
Regarding claim 17, Edelmann in view of Brady teaches the rolling element guide rail according to claim 15, wherein the profile body (body of 14) is made of a metallic material with a hardness greater than 54 HRC or of a ceramic material (col. 4, lines 21-24 discloses that profile body is made of steel, which is the same material as the instant application).
Response to Arguments
With regards to the drawing objections, applicant amendments have overcome the previously raised issue.
With regards to the claim objections, applicant amendments have overcome the previously raised issue.
With regards to the 35 U.S.C. 112(b) rejections, applicant amendments have overcome the previously raised issue.
Applicant's arguments filed 09/25/2025 have been fully considered but they are not persuasive. Applicant argues on page 6 that Edelmann fails to show the new limitation of “wherein the fracture edge is a result of a bending force applied to a panel, wherein fracture occurs in the area of a fracture groove.” However, this is considered product by process and where the fracture occurs is not linked to the rail element itself. The new limitation is in reference to the intermediate configuration when all these elements are in a strip, but the claims are not drawn to the intermediate product. Process by process is not structurally limiting the final product.
However, an alternative rejection is made with the assumption that the bending of the part could possibly impart some form of structure or based on the last line and the remarks that Applicant might be attempting to switch the claim coverage to be inclusive of the intermediate product.
Allowable Subject Matter
Claims 16 and 18-21 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record does not disclose nor render obvious the combination set forth in claims 16 and 18.
In particular, for claim 16, the prior art of record does not disclose a rolling element guide rail comprising” the profile body extends along the straight line of movement between a first end face and a second end face and wherein an inclined surface is formed adjacent to the first end face and/or wherein an inclined surface is formed adjacent to the second end face, which inclined surface is aligned at an acute angle to the rolling element running surface” in combination with other claim limitations.
In particular, for claim 18, the prior art of record does not disclose a method for manufacturing a plurality of rolling element guide rails comprising the step “wherein a fracture groove is ground into the plate-shaped material blank by the profiled grinding wheel between adjacent rolling element guide rails” in combination with other claim limitations. The prior arts of record does not show a grind wheel making the profile and then having the same grind wheel making a fracture groove between adjacent rolling element guide rails.
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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/AIMEE TRAN NGUYEN/Examiner, Art Unit 3617
/JOHN OLSZEWSKI/Supervisory Patent Examiner, Art Unit 3617