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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the embodiments of the conductive material being a spring, a flexible tap and pogo pins (claim 7) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. The drawing illustrating the invention is figure 14, the conductive element only being schematically illustrated and thus the specific elements listed and how the different types of elements listed are positioned and used to bridge the space through the housing is not shown.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The abstract of the disclosure is objected to because the replacement abstract includes a single reference character, this single reference character should be removed. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). In addition Applicant is reminded that any abstract amendment should appear on a separate sheet.
Claim Objections
Claim 4 is objected to because of the following informalities:
Claim 4, line 3, -from- - should be inserted after “different”.
Claim 15, line 1, “body (2)” should be deleted, the claim is attempting to an additional feature of the housing itself, not the subcomponent of the body, this claim generally matches claim 12 with a different dependency and should read in a similar manner.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 7-12 and 14-16 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, it is unclear how the conductive element is in “movable physical contact with a stationary part of the bearing”. If the bearing is stationary how is there movable contact? If this is in reference to the conductive element being a spring like element the only movement possible for element 50 would be to retract into the housing but then this would take the part out of contact with the bearing and it is unclear how there would be “movable physical contact” in this instance. It is further unclear based on the disclosure how the outer ring is considered as a stationary part “during use”. The bearing is a spherical rolling element bearing with an outer ring having a spherical outer surface, these bearings are specifically designed to allow for tilting or pivoting of the outer ring and the bearing as a whole to compensate for misalignment thus the outer ring is a movable part, not stationary, specifically during use. The recitation in the last line of the claim as a whole is unclear and the metes and bounds with regards to what is structurally being required cannot be clearly determined.
Regarding claim 15, it is unclear how many different openings the housing is now required to have. Claim 1 requires a housing holding the conductive element and the bearing, this would be at least one opening/hole, possibly two. However, claim 15 is stating that the there is another hole, does this now require a second or third distinct hole or could this also be in reference to the hole/opening that would “hold” the components of claim 1. Claim 15 is attempting to define the hole that the conductive element is in but the claim lacks this specific disclosure and therefore appears to be incomplete for omitting essential structural cooperative relationships of elements, such omission amounting to a gap between the necessary structural connections. See MPEP § 2172.01. The claim should include some indication that the hole is what houses the conductive element.
Regarding claim 16, the recitation of the claim is stating that the bearing is in movable contact with the housing, however claim 1 as amended states that the bearing part is stationary, see rejection above. It is unclear how the bearing or bearing part that contact the conducting element that is part of the housing can be both stationary and also movable.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 9 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. The amendment to claim 1 is defining a form of physical contact between the conductive element and the bearing during use, claim 9 is also defining a physical contact between the parts and does not offer any further limiting structure and thus claim 9 appears to only be restating the features which Applicant has amended into claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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) 1-5, 8-10, 12 and 16, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Riebling, DE 202006018877.
Regarding claim 1, Riebling discloses a bearing house (1) comprising a bearing house body (3) for holding a bearing (4), and at least one conducting element (2/13) providing an electrical connection between the inside of the bearing house body (1) and an outside material (14 or terminal connected to 14, see attached translation), wherein at least one conducting element (2/13) comprises an electrically conductive material (2 can be made of aluminum, steel or copper, all of which are conductive, see claims in attached translation, the screws 13 are also disclosed as being electrically connected with the plate 2 used to bridge the space between 2 and 14 making it a conductive element between 2 and 14), and wherein the at least one conducting element (2/13) is in movable physical contact with a stationary part of the bearing during use (the conductive element contacts the outer ring just like in the instant application, the outer ring during use could slip, similar to how the instant application the outer ring can tilt, thus as best understood the reference anticipates the claim).
Regarding claim 2, Riebling discloses that the electrical connection is configured to transfer static electricity through the bearing, when the bearing is inserted into the bearing house, through the at least one conducting element to the outside material (the claim is defining what the electrical connection is for, transferring static electricity, using “configured to” language but is ultimately not limiting the claim to any particular structure, the arrangement of Riebling includes metal plate 2 and screws 13 which form a conductive path between the bearing and the terminal element 14 this can be configured to allow input of an electrical charge or allow for the removal of static electricity (form a grounding feature) as the configured to recitation of the claim is not structurally limiting but is only defining the function, the structure of Riebling can perform the function).
Regarding claim 3, Riebling discloses that the electrical connection is configured to transfer static electricity from a rotatable shaft when inserted into the bearing house, through the bearing when the bearing is inserted into the bearing house, and through the at least one conducting element to the outside material (in a bearing the moving of the parts generates static electricity, the static electricity is transferred through all elements in contact along the path to any grounding element, this includes through the shaft, the bearing and the plate and screw of Riebling, like with claim 2 above the claim is not defining any particular structure but rather that the parts “are configured” to perform a function, the parts of Riebling can perform this function).
Regarding claim 4, Riebling discloses that the outside material is a material different from the bearing house (14 is disclosed as a spring plate that is electrically conductive, or in other words metal or metallic like element, and the housing is disclosed as plastic, see the fourth claim in the attached translation), or different from a material constituting the bearing inserted into the bearing house; or different from the material constituting a shaft inserted into the bearing and the bearing house.
Regarding claim 5, Riebling discloses that the bearing house body (3) is provided in [made of] a non-conductive material (Riebling discloses that 3 can be plastic or wood, both of which are non-conductive materials).
Regarding claim 8, Riebling discloses that the electrically conductive material is made of a metal material, and is an electrically conductive metal material (2 can be made of aluminum, steel or copper, all of which are conductive metals).
Regarding claim 9, Riebling discloses that [the] at least one conducting element (2) is in physical contact with the bearing (4) when the bearing is inserted into the bearing house (see figure showing both bearings touching the sides of 2).
Regarding claim 10, Riebling discloses that the electrical connection is connected to one or more bearing house feet and/or one or more attachment means (14 can be viewed as an attachment means, or alternatively the screw can be viewed as a separate element to the conductive member 2, as the claims do not structurally define what the parts are) providing an electrical connection from the inside of the bearing house body to the outside material.
Regarding claim 12, Riebling discloses that the bearing house is provided with at least one hole between the inside of the bearing house body and the outside material (the hole is the region of the housing body that holds 2 and 13, this corresponds to the hole 53 in the instant application that holds the conductive element).
Regarding claim 16, as best understood, Riebling discloses that the bearing (4) when installed within the bearing housing body is movable in contact with the bearing housing body during use (according to the combination of claims 1 and 16 the bearing or bearing part is stationary while also being movable which is unclear, all bearings can slip in the housing and thus Riebling can be considered as showing a stationary configuration that can include relative movement when slippage or creep occurs).
Claim(s) 1-5, 9-10 and 16, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Mola, USP 9,261,143.
Regarding claim 1, Mola discloses a bearing house comprising a bearing house body (40/50) for holding a bearing (20), and at least one conducting element (70) providing an electrical connection between the inside of the bearing house body (40/50) and an outside material (bolt 91 or grounding wire 92), wherein at least one conducting element (70) comprises an electrically conductive material (see column 2, lines 36-47) and wherein the at least one conductive element is in movable physical contact with a stationary part of the bearing during use (as noted above how something can movable contact a stationary object in the context of the disclosure is unclear, however the conductive element sits outside the outer ring, if the stationary ring slips during use there would be movable contact).
Regarding claim 2, Mola discloses that the electrical connection is configured to transfer static electricity through the bearing, when the bearing is inserted into the bearing house, through the at least one conducting element (70) to the outside material (see column 2, lines 21-41).
Regarding claim 3, Mola discloses that the electrical connection is configured to transfer static electricity from a rotatable shaft (15) when inserted into the bearing house, through the bearing (20) when the bearing is inserted into the bearing house, and through the at least one conducting element (70) to the outside material (91/92, see column 2, lines 21-41).
Regarding claim 4, Mola discloses that the outside material is a material different from the bearing house (91 and 92 are bolts and ground wires with 91 being specifically discloses as a conductive material and 50 is a plastic material, see column 2, lines 36-41 and column 2 lines 65 and 66), or different from a material constituting the bearing inserted into the bearing house, or different from the material constituting the shaft inserted into the bearing and the bearing house.
Regarding claim 5, as best understood, Mola discloses that the bearing house body (40/50) is comprised of a non-conductive material (50 is plastic see column 2, lines 36-41).
Regarding claim 9, Mola discloses that the at least one conducting element (70) is in physical contact with the bearing (20) when the bearing is inserted into the bearing house (see figure 3 showing 70 directly contacting the outer ring of the bearing).
Regarding claim 10, Mola discloses that the electrical connection is connected to one or more bearing house feet and/or one or more attachment means (the cavity in 50 that holds 70 and/or the bolt can be viewed as attachment means separate from the conductive element as the claims do not structurally define what the parts are) providing an electrical connection from the inside of the bearing house body to the outside material.
Regarding claim 16, as best understood, Mola discloses that the bearing (4) when installed within the bearing housing body is movable in contact with the bearing housing body during use (according to the combination of claims 1 and 16 the bearing or bearing part is stationary while also being movable which is unclear, all bearings can slip in the housing and thus Mola can be considered as showing a stationary configuration that can include relative movement when slippage or creep occurs).
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) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Riebling, DE 202006018877, in view of Klerk, WO2021/151985.
Regarding claim 11, Riebling does not disclose that the bearing house
Klerk teaches a bearing housing configuration that includes a shield (4) forming a shaft insertion (6) for inserting a shaft into the bearing house wherein the shield is formed with a spherical outer surface (4a) which is movable in contact with the bearing house body and the shield rests on the bearing when installed in the bearing house body (see claim 6 and figures 10-13) for the purpose of providing a water proof bearing housing that allows for increase angular movements of the shaft (see bottom of page 2).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Riebling and use any previously known housing configuration, including one that includes a shield forming a shaft insertion for inserting a shaft into the bearing house wherein the shield is formed with a spherical outer surface which is movable in contact with the bearing house body and the shield rests on the bearing when installed in the bearing house body, as taught by Klerk, for the purpose of providing a water proof bearing housing that allows for increase angular movements of the shaft.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mola, USP 9,261,143.
Mola, while disclosing conductive elements, does not disclose that the electrically conductive material may be made of a metal material, preferably an electrically conductive metal material.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Mola and make the conductive elements out of any previously known conductive material, including metal, 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 April 8, 2026 have been fully considered but they are not persuasive.
With regards to the remaining drawing objects Applicant makes no specific argument nor does Applicant indicate where these specific features/details are shown in the drawings and thus the objection is maintained.
With regards to Riebling Applicant argues that the reference is different from the claimed invention because the arrangement of the invention allows for angular movement of the shaft and the bearing housing maintains a “water-proof structure”. However this is not recited by the claim. Applicant appears to be linking all of these features, including the spring or “springy” aspect of the conductive element to this feature but limitations from the specification and/or limitations from dependent claims are not read into the claim. The claim does not recite any of the specifics raised in the argument and is thus unpersuasive in overcoming the claim rejection. If Applicant’s intent is for this newly added recitation of claim 1 to mean what is described in the middle of page 11 in the response then this would further raise issues with respect dependent claim actually further limiting or not.
Similarly with respect to Mola, Applicant focus on the conduct element being rigid however nothing in claim 1 explicitly requires the conductive element to be a spring or movable itself (“movable physical contact” is unclear and does not clearly mean that the conductive element most move). A rigid element can still move along another surface and thus be in moving contact with that part, in the case of the reference during creep or slippage is one example. Specifically Applicant states when mapping the claim in the argument against Mola that the conducting element “is configured as a movable contact member that maintains contact via movement/compliance” and specifically references a spring, this is not recited by claim 1.
With regards to Klerk, Applicant argues that the reference does not cure the deficiencies of Riebling, however since Riebling has not been found to be deficient for the reasons explained above the rejection is maintained.
Allowable Subject Matter
Claims 7 and 15, and dependent claim 14, are 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:
Reviewing claim 7 in light of the remarks this claim more accurate reflects what Applicant is arguing that claim 1 requires. Assuming claim 1 is amended to address the issue with “stationary part” above and state that the conductive element is a spring the claim would require the conductive element to extend through the housing, be a flexible/spring element that can adjust in response to movement of the bearing in the housing to always insure that the bearing and conductive element remain in contact, this preventing an interruption in the conductive path so that the current can always freely move through the housing to the outside material. A configuration like this argued by Applicant in the remarks is not taught nor rendered obvious by the prior art of record.
Regarding claim 15, the prior art of record does not teach nor render obvious the claimed combination that includes a hole running between the inside of the bearing body and the foot with the hole housing the conductive element, see rejection under 35 USC 112(b) above.
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617
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