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 .
Election/Restrictions
Applicant’s election without traverse of species II (Figure 7) in the reply filed on 24 April 2026 is acknowledged.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 14 June 2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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) 1-9, 11-16, and 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over Boerschig (US 10,119,562 B2) in view of Conrad (US 4,227,826 A).
Regarding claim 1, Boerschig discloses a bearing (see Figs. 19a-b) comprising:
a. a housing (810);
b. a race (830) positioned within the housing (see Figs. 19a-b);
c. a ball (870) positioned within the race (see Figs. 19a-b);
e. wherein the ball is fixed against translational movement relative to the race (see Column 14 lines 4-15); and
f. wherein the race is fixed against translational movement relative to the housing while the ball is positioned within the race (see Column 14 lines 4-15).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “the ball is fixed against translational movement relative to the race while the pin is extending from the ball” and “the race is fixed against translational movement relative to the housing while the ball is positioned within the race” are given limited patentable weight, all that is required of claim 1 is that the ball is capable of being fixed against translational movement while the pin is extending from the ball and the race is capable of being fixed against translation movement while the ball is within the race.
Boerschig fails to explicitly disclose as claimed that a pin extends from the ball; and
wherein the ball is fixed against translational movement relative to the race while the pin is extending from the ball.
However, Conrad teaches a bearing (see Fig. 2) comprising a pin (20) extending from the ball (10), in order to provide a pin that allows the bearing assembly to be connected to another object and utilized in the bearings intended manner.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the bearing of Boerschig, with Conrad, such that it comprises a pin extending from the ball, in order to provide a pin that allows the bearing assembly to be connected to another object and utilized in the bearings intended manner.
Accordingly, the combination of Boerschig and Conrad teaches wherein the ball (870 of Boerschig) is fixed against translational movement relative to the race (830 of Boerschig) while the pin is extending from the ball (see Column 14 lines 4-15 of Boerschig).
Regarding claim 2, the combination of Boerschig and Conrad teaches wherein the ball (870 of Boerschig) and the housing (810 of Boerschig) are cooperatively arranged and configured such that the ball may be removed from the housing when the pin is not extending from the ball (see Figs. 19a-b of Boerschig).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “configured such that the ball may be removed from the housing when the pin is not extending from the ball” are given limited patentable weight, all that is required of claim 2 is that the ball is capable of being removed from the housing when the pin is not extending from the ball.
Regarding claim 3, the combination of Boerschig and Conrad teaches wherein the ball (870 of Boerschig) and the race (830 of Boerschig) are cooperatively arranged and configured such that rotation of the ball to an installation orientation allows insertion of the ball into the race and removal of the ball from the race (see Figs. 19a-b of Boerschig).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “rotation of the ball to an installation orientation allows insertion of the ball into the race and removal of the ball from the race” are given limited patentable weight, all that is required of claim 3 is that the ball is capable of being rotated into an installation position to allow insertion and removal of the ball from the race.
Regarding claim 4, the combination of Boerschig and Conrad teaches wherein the housing (810 of Boerschig), the race (830 of Boerschig), and the ball (870 of Boerschig) are cooperatively arranged and configured such that the presence of the ball in an operational orientation within the race locks the race within the housing (see Figs. 19a-b of Boerschig and see Column 14 lines 4-15 of Boerschig).
Regarding claim 5, the combination of Boerschig and Conrad teaches wherein the housing (810 of Boerschig), the race (830 of Boerschig), and the ball (870 of Boerschig) are cooperatively arranged and configured such that removal of the race from the housing requires prior removal of the ball from the race (see Figs. 19a-b of Boerschig).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “removal of the race from the housing requires prior removal of the ball from the race” are given limited patentable weight, all that is required of claim 5 is that the race is capable of being removed from the housing once the ball is removed from the race.
Regarding claim 6, Boerschig discloses a bearing (see Figs. 19a-b) comprising:
a. a housing (810);
b. a race (830) positioned within the housing (see Figs. 19a-b);
c. a ball (870) positioned within the race (see Figs. 19a-b);
e. wherein the ball is fixed against translational movement relative to the race (see Column 14 lines 4-15);
f. wherein the race exerts a radial force on the ball thereby retaining the ball (see Figs. 19a-b and see Column 13 lines 54-67); and
g. wherein an elastomeric component (880) causes the radial force (see Figs. 19a-b).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “the ball is fixed against translational movement relative to the race while the pin is extending from the ball”, “the race is fixed against translational movement relative to the housing while the ball is positioned within the race”, and “an elastomeric component causes the radial force” are given limited patentable weight, all that is required of claim 6 is that the ball is capable of being fixed against translational movement while the pin is extending from the ball, the race is capable of being fixed against translation movement while the ball is within the race, and the elastomeric component is capable of causing the radial force.
Boerschig fails to explicitly disclose as claimed that a pin extends from the ball; and
wherein the ball is fixed against translational movement relative to the race while the pin extends from the ball.
However, Conrad teaches a bearing (see Fig. 2) comprising a pin (20) extending from the ball (10), in order to provide a pin that allows the bearing assembly to be connected to another object and utilized in the bearings intended manner.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the bearing of Boerschig, with Conrad, such that it comprises a pin extending from the ball, in order to provide a pin that allows the bearing assembly to be connected to another object and utilized in the bearings intended manner.
Accordingly, the combination of Boerschig and Conrad teaches wherein the ball (870 of Boerschig) is fixed against translational movement relative to the race (830 of Boerschig) while the pin is extending from the ball (see Column 14 lines 4-15 of Boerschig).
Regarding claim 7, the combination of Boerschig and Conrad teaches wherein the ball (870 of Boerschig) and the housing (810 of Boerschig) are cooperatively arranged and configured such that the ball may be removed from the housing when the pin is not extending from the ball (see Figs. 19a-b of Boerschig).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “cooperatively arranged and configured such that the ball may be removed from the housing when the pin is not extending from the ball” are given limited patentable weight, all that is required of claim 7 is that the ball is capable of being removed from the housing when the pin is not extending from the ball.
Regarding claim 8, the combination of Boerschig and Conrad teaches wherein the ball (870 of Boerschig) and the race (830 of Boerschig) are cooperatively arranged and configured such that rotation of the ball to an installation orientation allows insertion of the ball into the race and removal of the ball from the race (see Figs. 19a-b of Boerschig).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “rotation of the ball to an installation orientation allows insertion of the ball into the race and removal of the ball from the race” are given limited patentable weight, all that is required of claim 8 is that the ball is capable of being rotated into an installation position to allow insertion and removal of the ball from the race.
Regarding claim 9, the combination of Boerschig and Conrad teaches wherein the radial force (force applied by 880 of Boerschig) operates without any dependence on the application of an axial force (see Figs. 19a-b).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “operates without any dependence on the application of an axial force” are given limited patentable weight, all that is required of claim 9 is that the radial force is capable of operating without any dependence on the application of an axial force.
Regarding claim 11, the combination of Boerschig and Conrad teaches wherein the radial force (force applied by 880 of Boerschig) is distributed around the ball (870 of Boerschig, see Figs. 19a-b of Boerschig).
Regarding claim 12, the combination of Boerschig and Conrad teaches wherein the elastomeric component (880 of Boerschig) is a ring (see Figs. 19a-b of Boerschig) contacting fingers (A in annotated Figure 19a below) on the race (830 of Boerschig).
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Figure 1. Annotated Figure 19a.
Regarding claim 13, Boerschig discloses a bearing (see Figs. 19a-b) comprising:
a. a housing (810);
b. a race (830) positioned within the housing (see Figs. 19a-b);
c. a ball (870) positioned within the race (see Figs. 19a-b);
e. wherein the race is fixed against translational movement relative to the housing (see column 14 lines 4-15) while the ball is positioned within the race (see Figs. 19a-b);
f. wherein the race exerts a radial force on the ball thereby retaining the ball (see Figs. 19a-b and see Column 13 lines 54-67); and
g. wherein an elastomeric component (880) causes the radial force (see Figs. 19a-b).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “the race is fixed against translational movement relative to the housing while the ball is positioned within the race”, “the race exerts a radial force on the ball thereby retaining the ball”, and “an elastomeric component causes the radial force” are given limited patentable weight, all that is required of claim 13 is that the race is capable of being fixed against translational movement while the ball is in the race, the race is capable of exerting a force to retain the ball therein, and the elastomeric component is capable of causing the radial force.
Boerschig fails to explicitly disclose as claimed that a pin extends from the ball.
However, Conrad teaches a bearing (see Fig. 2) comprising a pin (20) extending from the ball (10), in order to provide a pin that allows the bearing assembly to be connected to another object and utilized in the bearings intended manner.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the bearing of Boerschig, with Conrad, such that it comprises a pin extending from the ball, in order to provide a pin that allows the bearing assembly to be connected to another object and utilized in the bearings intended manner.
Regarding claim 14, the combination of Boerschig and Conrad teaches wherein the housing (810 of Boerschig), the race (830 of Boerschig), and the ball (870 of Boerschig) are cooperatively arranged and configured such that the presence of the ball in an operational orientation within the race locks the race within the housing (see Figs. 19a-b of Boerschig and see Column 14 lines 4-15 of Boerschig).
Regarding claim 15, the combination of Boerschig and Conrad teaches wherein the housing (810 of Boerschig), the race (830 of Boerschig), and the ball (870 of Boerschig) are cooperatively arranged and configured such that removal of the race from the housing requires prior removal of the ball from the race (see Figs. 19a-b of Boerschig)..
Applicant is reminded that "[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).
Accordingly, all the process limitations of “removal of the race from the housing requires prior removal of the ball from the race” are given limited patentable weight, all that is required of claim 15 is that the race is capable of being removed from the housing once the ball is removed from the race.
Regarding claim 16, the combination of Boerschig and Conrad teaches wherein the radial force (force applied by 880 of Boerschig) operates without any dependence on the application of an axial force (see Figs. 19a-b).
Applicant is reminded that "[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).
Accordingly, all the process limitations of “operates without any dependence on the application of an axial force” are given limited patentable weight, all that is required of claim 16 is that the radial force is capable of operating without any dependence on the application of an axial force.
Regarding claim 18, the combination of Boerschig and Conrad teaches wherein the radial force (force applied by 880 of Boerschig) is distributed around the ball (870 of Boerschig, see Figs. 19a-b of Boerschig).
Regarding claim 19, the combination of Boerschig and Conrad teaches wherein the elastomeric component (880 of Boerschig) is a ring contacting fingers (A in annotated Figure 19a above) on the race (830 of Boerschig).
Regarding claim 20, the combination of Boerschig and Conrad teaches wherein:
a. the housing (810 of Boerschig) has an elastomer channel (850 and 888 of Boerschig) that contains the elastomeric component (880 of Boerschig),
b. the race (830 of Boerschig) comprises a lip (A in annotated Figure 19a above) which is in contact with the elastomeric component (see Fig. 19b of Boerschig), and
c. the lip is locked within the elastomer channel while the ball is positioned within the race (see Figs. 19a-b of Boerschig).
Claim(s) 10 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Boerschig (US 10,119,562 B2) and Conrad (US 4,227,826 A), as applied to claims 6 and 13, and further in view of Maughan (US 5,641,235 A).
Regarding claim 10, the combination of Boerschig and Conrad teaches wherein the radial force (force applied by 880 of Boerschig) is exerted on the race (830 of Boerschig), but fails to disclose as claimed that the radial force is exerted through fingers on the race and wherein the fingers are separated by gaps.
However, Maughan teaches a race (44, see Fig. 4) comprising expansion slits (64 in Fig. 4) and fingers (portions between slits 64), in order to allow the race to expand in a more efficient manner when accepting the ball (66) therein.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Boerschig and Conrad, with Maughan, such that the bearing of Boerschig comprises expansion slits and fingers as taught by Maughan, in order to allow the race to expand in a more efficient manner when accepting the ball therein.
Accordingly, the combination of Boerschig, Conrad, and Maughan teaches the radial force (force applied by 880 of Boerschig) is exerted through fingers (finger sections taught by Maughan on the bearing of Boerschig) on the race (830 of Boerschig) and wherein the fingers are separated by gaps (taught by 64 of Maughan).
Regarding claim 17, the combination of Boerschig and Conrad teaches wherein the radial force (force applied by 880 of Boerschig) is exerted on the race (830 of Boerschig), but fails to disclose as claimed that the radial force is exerted through fingers on the race and wherein the fingers are separated by gaps.
However, Maughan teaches a race (44, see Fig. 4) comprising expansion slits (64 in Fig. 4) and fingers (portions between slits 64), in order to allow the race to expand in a more efficient manner when accepting the ball (66) therein.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the combination of Boerschig and Conrad, with Maughan, such that the bearing of Boerschig comprises expansion slits and fingers as taught by Maughan, in order to allow the race to expand in a more efficient manner when accepting the ball therein.
Accordingly, the combination of Boerschig, Conrad, and Maughan teaches the radial force (force applied by 880 of Boerschig) is exerted through fingers (finger sections taught by Maughan on the bearing of Boerschig) on the race (830 of Boerschig) and wherein the fingers are separated by gaps (taught by 64 of Maughan).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY A HALL whose telephone number is (571)272-5907. The examiner can normally be reached Monday through Thursday 8:00am to 4:00pm.
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/ZAH/Examiner, Art Unit 3678
/AMBER R ANDERSON/Supervisory Patent Examiner, Art Unit 3678
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