DETAILED ACTION
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 § 112
(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 and 9 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.
In claim 8, the limitation “the first track surface and the second track surface each have a surface roughness Ra that is equal to or less than 0.03 pm and is greater than 0.01 pm” is new matter as it is narrowing the claim to a specific range but there is no support in the specification. In other words, the Applicant is assigning a lower range where the surface roughness of the tracks is “greater than 0.01 pm” but it is not disclosed anywhere in the specification.
In claim 9, the limitation “the first track surface and the second track surface each have a surface roughness Ra that is equal to or less than 0.015pm and is greater than 0.01 pm” is new matter as it is narrowing the claim to a specific range but there is no support in the specification. In other words, the Applicant is assigning a lower range where the surface roughness of the tracks is “greater than 0.01 pm” but it is not disclosed anywhere in the specification.
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 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura (JP 2002339976 A) in view of Sato (US 6357923 B1).
Regarding claim 1, Kitamura discloses (in fig. 2) a rolling bearing (10) comprising:
a first member (11) having a first track surface (track of 11);
a second member (12) assembled to the first member (11) and having a second track surface (track of 12) opposite to the first track surface (track of 11);
and a plurality of rolling elements (13) rotatably incorporated between the first track surface (track of 11) and the second track surface (track of 12),
wherein the rolling element (13) is made of stainless steel (para. [0018] discloses that the rolling elements are made of stainless steel),
and the surface roughness Ra of the rolling element is 0.01 μm or less (para. [0031] discloses the surface roughness of 0.001 μm or less).
Kitamura does not disclose the rolling element and the first track surface and the second track surface have mutually different surface compositions.
Sato teaches the rolling element and the first track surface and the second track surface have mutually different surface compositions (col. 13, lines 52-67 discloses that the inner and outer races are made out of SUJ2 steel and the rolling element is made of SUS440 C, which has different hardnesses after hardening and tempering so they have different surface composition) for the purpose of having a rolling bearing that has a prolonged life, a low torque and little torque variation under rotational and vibrational condition during use (col. 7, lines 28-32).
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 rolling element and the first and second track surface have mutually different surface compositions, as taught by Sato, in the rolling bearing of Kitamura for the purpose of having a rolling bearing that has a prolonged life, a low torque and little torque variation under rotational and vibrational condition during use (col. 7, lines 28-32).
Regarding claim 2, Kitamura in view of Sato the rolling bearing according to claim 1, wherein the first track surface and the second track surface each have a surface roughness Ra of 0.03 μm or less (Kitamura para. [0012] discloses “the rolling bearing of the present invention is characterized in that the raceways and rolling elements are made of metal, and at least the surfaces of the rolling elements have a hardened layer with a Vickers hardness (Hv) of 1200 or more, and the surface roughness of the rolling elements is 0.001 μm” where “at least” implies that not only the rolling element but the raceways can have the same surface roughness, which would be less than 0.03 μm.)
However, see the alternative rejection of claim 2 below.
Regarding claim 4, Kitamura in view of Sato teaches the rolling bearing according to claim 3, wherein an absolute value of a difference between a hardness of the first track surface and the second track surface and the hardness of the surface of the rolling element is 4 HRC or less (Sato col. 13, lines 52-67 discloses the hardness of the tracks is HRC 60-62 and the hardness of the rolling element is HRC 58-60, which is a difference of 4 HRC or less).
Regarding claim 5, Kitamura in view of Sato teaches the rolling bearing according to claim 4, wherein the hardness of the first track surface and the second track surface is 58 HRC or more and 64 HRC or less, and the hardness of the surface of the rolling element is 56 HRC or more and 63 HRC or less (Sato col. 13, lines 52-67 discloses the hardness of the tracks is HRC 60-62 and the hardness of the rolling element is HRC 58-60, which are within the ranges).
Claim(s) 2 and 4-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura (JP 2002339976 A) in view of Sato (US 6357923 B1) and in further view of Sakagami (JP2007056912A).
Regarding claim 2, Kitamura in view of Sato teaches the rolling bearing according to claim 1, and while the disclosure is suggestive that the raceways can be the same composition as the rolling elements, does not explicitly state that the first track surface and the second track surface each have a surface roughness Ra of 0.03 μm or less.
Sakagami teaches the first track surface and the second track surface each have a surface roughness Ra of 0.03 μm or less (para. [0005] discloses the surface roughness is 0.01 μm or less).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the first track surface and the second track surface to have a surface roughness Ra of 0.03 μm or less, 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.
Regarding claim 4, Kitamura in view of Sato and in further view of Sakagami teaches the rolling bearing according to claim 1, wherein an absolute value of a difference between a hardness of the first track surface and the second track surface and the hardness of the surface of the rolling element is 4 HRC or less (Sato col. 13, lines 52-67 discloses the hardness of the tracks is HRC 60-62 and the hardness of the rolling element is HRC 58-60, which is a difference of 4 HRC or less).
Regarding claim 5, Kitamura in view of Sato and in further view of Sakagami teaches the rolling bearing according to claim 4, wherein the hardness of the first track surface and the second track surface is 58 HRC or more and 64 HRC or less, and the hardness of the surface of the rolling element is 56 HRC or more and 63 HRC or less (Sato col. 13, lines 52-67 discloses the hardness of the tracks is HRC 60-62 and the hardness of the rolling element is HRC 58-60, which are within the ranges).
Regarding claim 6, Kitamura in view of Sato and in further view of Sakagami teaches the rolling bearing according to claim 5, wherein a lubricant is supplied between the first track surface and the second track surface and the rolling element (Kitamura para. [0028]).
Kitamura in view of Sato and in further view of Sakagami does not teach the kinematic viscosity of the lubricant at 400C is 50 mm2/s or less.
Sakagami further teaches the kinematic viscosity of the lubricant at 400C is 50 nmm2/s or less (para. [0005] discloses that it is within the range) .
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 lubricant, as taught by Sakagami, in the rolling bearing of Kitamura in view of Sato and in further view of Sakagami as it substituting the unknown lubricant with a known lubricant to achieve the predictable result of lubricating the rolling bearing and track surfaces.
Regarding claim 7, Kitamura in view of Sato and in further view of Sakagami teaches the rolling bearing according to claim 1, wherein the first track surface and the second track surface each have a surface roughness Ra that is different than the surface roughness RA of the rolling element (Kitamura para. [0031] discloses the surface roughness of 0.001 μm or less for the rolling element and Sakagami para. [0005] discloses the surface roughness is 0.01 μm or less for the first track surface and the second track surface).
Claim(s) 8 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kitamura (JP 2002339976 A) in view of Sato (US 6357923 B1) and in further view of Kiuchi (US 20010015244 A1).
Regarding claim 8, Kitamura discloses the rolling bearing according to claim 1 but does not disclose the first track surface and the second track surface each have a surface roughness Ra that is equal to or less than 0.03 μm and is greater than 0.01 μm.
Kiuchi teaches the first track surface and the second track surface each have a surface roughness Ra that is equal to or less than 0.03 μm and is greater than 0.01 μm (para. [0072] discloses that the surface roughness of the inner and outer ring is between 0.01 μm to 0.03 μm, which includes the claimed range).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the first track surface and the second track surface to have a surface roughness Ra that is equal to or less than 0.03 μm and is greater than 0.01 μm, 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.
Regarding claim 9, Kitamura discloses the rolling bearing according to claim 1 but does not disclose the first track surface and the second track surface each have a surface roughness Ra that is equal to or less than 0.015μm and is greater than 0.01 μm.
Kiuchi teaches the first track surface and the second track surface each have a surface roughness Ra that is equal to or less than 0.015μm and is greater than 0.01 μm (para. [0072] discloses that the surface roughness of the inner and outer ring is bwtween 0.01 μm to 0.03 μm, which includes the claimed range).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention for the first track surface and the second track surface that is equal to or less than 0.015 μm and is greater than 0.01 μm, 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.
Response to Arguments
Applicant's arguments filed 03/09/2026 have been fully considered but they are not persuasive.
Applicant’s first argument seems to be based on the specifics of the materials of the surfaces but the limitation is only stating that the rolling element and the first track surface and the second track surface have “mutually different surface compositions.” Sato col. 13, lines 55 to 67 discloses that the rolling element and the inner and outer races are made out of, SUS440C and SUJ2, respectively. Col. 13, lines 55 to 67 also states that the rolling element can be coated with a ceramic coating, but that would also be considered a “mutually different surface composition” from the tracks.
Applicant then argued that that the rolling element would not be made of stainless steel anymore if using the Sato reference. However, the rolling element would still be made out of SUS440C, which is a stainless steel, but with a ceramic coating, but the Examiner is only teaching that the rolling element is being made out of stainless steel.
Applicant finally argued that the combination does not have a convincing line of reasoning, however, if the rolling element and tracks are made out of different stainless steel materials, as taught by Sato, the rolling element and tracks would still have a prolonged life. As a result, the teaching of the reference as applied above renders the claim obvious.
Regarding claim 8 and 9, the limitation “the first track surface and the second track surface each have a surface roughness Ra that…is greater than 0.01 pm.” is not in the specification. This is new matter and would suggest that the number itself is not critical to the practice of the invention and it is an attempt to write around something instead of actually claiming a structural distinction over the prior art.
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