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 Status
Applicants’ June 15, 2026 response to the March 18, 2026 Non-Final Rejection is acknowledged. Claims 1 and 3-8 are pending; claim 1 is independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Examiner’s Note
Applicant is invited to include in future Remarks where specifically written description support is for any claim amendments.
Examiner notes that support for the amendment to claim 1 line 4 is found in Figure 3 and the description of Figure 3 in the specification, support for claim 1 lines 8-9 is Table 1 of the specification and support for claim 1 lines 10-11 is previously filed claim 2.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1, 3 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita et al. (JP 2006/161887 A Google Patents machine translation March 13, 2026 and original for figures), hereinafter Fujita, in view of Mori (JP 2008/138705 A Google Patents machine translation March 13, 2026), hereinafter Mori, as evidenced by JVN Bearings (“Bearing Steel Grades and usage: Understanding the Basics”) (all of record)).
Regarding claims 1 and 3, Fujita teaches a needle roller bearing with a shaft (53) disposed between a raceway surface on the outer peripheral surface of the shaft and the shaft inner member so as to be freely rollable (Pg. 2 [20]), the plurality of needle rollers roll on the raceway surface (Pg. 2 [19]), used in a transmission (“transmission shaft”; Pg. 1 [3]), the shaft is made of JIS steel tyle SUJ2 and is carburized or carbonitrided (Pg. 3 [4]), carburizing can occur to the steel in an atmosphere of Rx and enriched gas for about 3-5 hours at 820-850⁰C (Pg. 3 [3]). One of ordinary skill in the art reasonably understands that by carburizing steel in this manner a diffusion layer including crystal grains of iron carbide are formed on a surface of the steel. JVN Bearings provides evidence that JIS SUJ2 steel includes Cr 1.3-1.6% (understood to one of ordinary skill in the art to routinely be cited in mass%) and Mo (Pg. 4 Table); i.e. is a chromium-molybdenum steel).
Fujita as evidenced by JVN Bearings does not specifically teach a triiron tetraoxide film formed on a surface of the base material, nor the triiron tetraoxide film has a thickness of 1-2 microns, nor a Cr content in the base material is 0.90-1.20 wt%.
Regarding the amount of Cr claimed being 0.90-1.20 wt%, this is close to the lower limit of Fujita as evidenced by JVN Bearings with a lower limit of 1.3%which is close to the lower limit of 1.8% of Liang, such that no difference in properties is expected between these close values. Further, the prior art of record teaches no difference in properties. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I), as the values are close a prima facie case of obviousness exists where one of ordinary skill in the art before the effective filing date of the invention would have found the claimed range obvious over Fujita as evidenced by JVN Bearings.
Mori is in the similar field of endeavor of increasing the life of bearings (Pg. 15 [10]) and teaches an oxide film is formed on the rolling surface and is triiron tetraoxide (Pg. 3 [7]) on the surface of the bearing member is a 0.1 microns or more (Pg. 3 [7]-[8]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Fujita to incorporate the particular oxide film and thickness of Mori. The motivation for doing so would have been to improve the life of the bearing (Pg. 2 [7]), which is a desired characteristic in the bearing of Fujita (Abstract).
For the thickness of the film, in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 8, Fujita in view of Mori, as evidenced by JVN Bearings teaches each limitation of claim 1, as discussed above. Fujita further teaches a needle roller bearing with a shaft (53) disposed between the raceway surface on the outer peripheral surface of the shaft and the shaft inner member so as to be freely rollable (Pg. 2 [20]), the plurality of needle rollers roll on the raceway surface (Pg. 2 [19]; “bearing device”), used in a transmission (“transmission shaft”; Pg. 1 [3]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Fujita in view of Mori, as evidenced by JVN Bearings and King-BlogFrost (“Astm Grain Size Number and Grain Size Diameter”) (copy provided herewith).
Regarding claim 4, Fujita in view of Mori, as evidenced by JVN Bearings teaches each limitation of claim 1, as discussed above. Fujita does not teach an average grain size of prior austenite crystal grains in the surface of the base material is ≤ 8 microns.
Mori is in the similar field of endeavor of increasing the life of bearings (Pg. 15 [10]) and teaches exceeding No 10 in the grading number of austenitic crystal grain in the surface portion of the bearing member, and this is residual austenite (Abstract). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Fujita to incorporate the residual austenite grain size of Mori. The motivation for doing so would have been to improve the life of the bearing (Pg. 2 [8]), which is a desired characteristic in the bearing of Fujita (Abstract). King-BlogFrost provides evidence that exceeding 10 is less than 11 microns (Pg. 11 first table).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fujita in view of Mori, further in view of Yamada et al. (US 2020/0378442 A1), hereinafter Yamada, as evidenced by JVN Bearings.
Regarding claims 5-7, Fujita in view of Mori, as evidenced by JVN Bearings teaches each limitation of claim 1, as discussed above. Fujita does not teach a proportion of an area of compound grains including the crystal grains of at least one of the iron carbide, iron nitride, or iron carbonitride in the diffusion layer is greater than or equal to 3% and an average grain size of the compound grains is ≤0.3 micron, nor the diffusion layer includes a plurality of martensite blocks wherein the largest grain size of the martensite blocks is ≤3.8 microns.
Yamada is in the similar field of endeavor of bearing part composed of a chromium molybdenum steel, the bearing part including a diffusion layer in a surface of the bearing part ([0015]) and teaches the diffusion layer includes a plurality of compound grains and a plurality of martensite blocks, an average grain size of the compound grains is less than or equal to 0.3 μm, an area ratio of the compound grains in the diffusion layer is more than or equal to 3%, and maximum grain size of the plurality of martensite blocks is less than or equal to 3.8 μm ([0015]). Further, each of the compound grains is a crystal grain of an iron (Fe) carbide, an iron nitride, or an iron carbonitride, more specifically, the compound grain is a crystal grain of a compound in which chromium substitutes for part of an iron site of cementite (Fe3C) and nitrogen (N) substitutes for part of a carbon (C) site thereof (i.e., a compound represented by (Fe,Cr)3(C,N)) ([0058]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify Fujita to incorporate the above details of Yamada. The motivation for doing so would have been to wear resistance of the bearing part ([0026]; [0109]; [0110]) which is a desired characteristic in the bearing of Fujita (Pg. 2 [9]).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Response to Arguments
Applicants’ amendment and related arguments, see Pg. 4, filed June 15, 2026, with respect to 35 U.S.C. 112(b) rejections have been fully considered and are persuasive. The 35 U.S.C. 112(b) rejections of March 18, 2026 has been withdrawn.
Applicants’ amendment and related Remarks arguments filed June 15, 2026 have been fully considered but they are not persuasive regarding the 35 U.S.C. 103 rejections of record. Applicant relies on the Cr range not being taught by Fujita or Mori. This is not persuasive as the ranges are close, and a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I). Therefore, the claimed range of upper limit 1.20 wt% is obvious over the lower limit of the prior art of 1.3% (and no difference in properties is expected as rejected above) and applicants’ argument is not persuasive.
For these reasons, and for those reasons as advanced in the rejections above, the present claims are not found to distinguish over the prior art and this action is made FINAL.
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 KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784
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