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 .
Status of Claims
Pending and under examination: claims 1-10
Objected to: claim 9
Rejected: claims 1-8 and 10
Claim Rejections - 35 USC § 103
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 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 4-8, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 20160178009 A1).
Regarding claim 1, with regard to the claimed “A rolling component made of steel and having a surface,” Sato teaches an outer ring, an inner ring, and a ball each serving as a bearing part is made of a steel and having a surface (Abstract).
With regard to the claimed “comprising a surface layer portion that is a region up to 20 µm in depth from the surface”, Sato teaches “a surface layer region defined as a region extending to a depth of not more than 20 μm from an outer ring raceway surface, an inner ring raceway surface, and a ball rolling surface” (Abstract).
With regard to the claimed “the rolling component being intended for use with hydrogen-utilizing equipment” absent a specific indication how what structural limitations are imparted by the claimed intended use limitation, Sato’s rolling component meets the claim.
With regard to the claimed “the steel containing 0.70 mass percent or more and 1.10 mass percent or less of carbon, 0.15 mass percent or more and 0.35 mass percent or less of silicon, 0.30 mass percent or more and 0.60 mass percent or less of manganese, and 1.30 mass percent or more and 1.60 mass percent or less of chromium,” Sato teaches that the steel contains 0.95 mass % or more and 1.10 mass % or less of carbon, 0.05 mass % or more and less than 0.3 mass % of silicon, 0.10 mass % or more and 0.50 mass % or less of manganese, and 1.30 mass % or more and 2.00 mass % or less of chromium. 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.). Similarly, 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.).
With regard to the claimed “in the surface layer portion, the steel having a precipitate formed therein with chromium or vanadium contained as a major ingredient,” although not explicitly stated, Sato teaches carbides and carbonitrides being present in the surface layer region [0026]-[0028], and an overlapping chromium content as discussed above. Furthermore, there is a substantially similar process of making, such as preparing the steel body [0088], carbonitriding or nitriding [0089], quenching [0091], tempering [0092], and finishing and assembly [0093]-[0094], which is substantially similar to the process in the instant specification which includes preparation, nitriding, quenching, tempering, and finishing/assembling (see [0072]-[0078] of instant specification): thus, it is prima facie expected for there to be an a precipitate formed with chromium or vanadium contained as a major ingredient.
With regard to the claimed “the rolling component having a compressive residual stress of 80 MPa or more at a location having a distance of 50 µm from the surface”, although not explicitly stated, the properties are prima facie expected to be present due to the substantially similar composition and process of making.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
Regarding claim 4, Sato teaches that the precipitates, which include carbides and carbonitrides, have a diameter of 0.5 µm or less [0006]-[0008], which lies within the claimed range. 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.). Similarly, 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.).
Regarding claim 5, Sato teaches an area ratio of a precipitate in a region where the carbonitrided layer is not formed, within the surface layer region, of 7% or less [0026]. 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.). Similarly, 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.).
Regarding claim 6, Sato does not explicitly teach the hardness at a distance of 50 µm, but teaches that the contact surface has a hardness of 700 HV (about 60 HRC) or more [0022], which overlaps with the claimed range. 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.). Similarly, 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.).
Regarding claim 7, Sato teaches that in the bearing part, preferably the contact surface has retained austenite of an amount of 20 vol % or more and 35 vol % or less; accordingly, the durability of the bearing part in a foreign-matters intrusion environment can be improved while an adequate hardness of the contact surface is maintained [0023].
Sato further teaches in the bearing part, preferably an average amount of retained austenite in the whole bearing part is 18 vol % or less; accordingly, the improvement in dimensional stability (suppression of a secular dimensional change) of the bearing part can be achieved [0024].
Thus, although Sato teaches a range that overlaps with the claimed range, Sato does not explicitly teach that the retained austenite content lies at a distance of 50 µm from the surface. However, in view of the fact that the contact surface is 20-35%, and the rest of the part has a content of 18 vol% or less, it is prima facie expected that a depth below the surface, as claimed, the range lies between the upper ranges of 20-35% and 18%, which meets and/or overlaps with the claimed range. 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.). Similarly, 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.).
Regarding claim 8, Sato teaches a nitrogen concentration of 0.2 wt. % in the surface layer portion (Abstract).
Regarding claim 10, Sato teaches a bearing comprising an inner ring, an outer ring, and a ball (meeting rolling element) (Abstract). Each of the components is made of a steel for the rolling component as described in claim 1 above. Absent a clear indication of what structural features/properties are necessarily present from the claimed intended-use limitation, the intended-use limitation does not further limit the claim.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 20160178009 A1), as applied to claim 1 above, in view of Maeda et al. (US 20100150489 A1).
Regarding claims 2-3, Sato teaches the rolling component of claim 1 above, but is silent regarding the steel containing vanadium or molybdenum.
Maeda teaches a deep groove ball bearing (Abstract) and further teaches including vanadium in an amount of 0.2-0.4 wt.% (Abstract) and molybdenum in an amount of 0.1-0.7 wt.% (Abstract).
It would have been obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to modify Sato by including V and Mo in the above described amounts, as doing so would allow for forming a fine carbide, deposits in a grain boundary (austenite grain boundary), refines crystal grains and improves the strength and the toughness of the rolling member [0023], when vanadium is added. Furthermore, adding molybdenum ensures the rolling contact fatigue life of the rolling member in a high-temperature environment since the same improves the hardenability of the steel and improves temper softening resistance by forming a carbide [0021]. It is also conceivable that a carbide or a carbonitride of molybdenum traps hydrogen, and molybdenum is effective also for suppressing flaking resulting from hydrogen embrittlement [0021].
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: with regard to dependent claim 9, the prior art does not anticipate or reasonably render obvious the cumulative limitations of the claim, with particular attention to the features of “the top 50 percent in area fraction of martensite block grains in the steel in the surface layer portion has an average grain size of 1.5 μm or less”.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
