Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Claim Objections
Claim 1 is objected to because of an informality: the word “of” should be inserted before “keyways” in line 16. Appropriate correction is required.
Rejections under 35 USC 112
The following is a quotation of 35 U.S.C. 112:
(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 1-3, 7-8 and 12 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 applicant regards as the invention.
Claim 1 recites a keyway provided in the inner annulus in line 18. It is unclear if this is referring to one of the third number of keyways, or is introducing another/fourth keyway.
Claim 12 recites the third number (N3) of keyways in the inner annulus; and … the second number (N2) of keyways in the outer annulus. This is confusing because claim 12 previously recites the inner annulus having the second number of keyways, and, the outer annulus having the third number of keyways.
Claims 2-3 and 7-8 are rejected for depending from claim 1.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1-3, 7-8, and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Applicant’s Admitted Prior Art (“AAPA”) in view of USPGPub No. 2010/0329776 (“the ‘776 reference”).
Regarding claim 1, AAPA teaches a system for axially preloading a component (para. [0031], wherein all references to Applicant’s specification refer to the originally filed specification), comprising: a housing (102), wherein the housing comprises a threaded inner circumferential surface with a first thread pitch (para. [0031]), and wherein the housing is provided with a first number of keyways (114) disposed around its circumference (fig. 1A, para. [0032]); a component (108) disposed radially internal to the housing (fig. 1B, para. [0031]); an outer annulus (104) radially inward of the housing (fig. 1B), comprising a threaded outer circumferential surface with a thread pitch substantially equal to the first thread pitch (fig. 1B, para. [0031]), wherein the outer annulus is provided with a second number of keyways (116) disposed around its circumference (fig. 1A, para. [0032]); wherein the outer annulus is configured to rotate with respect to the housing to enable alignment of at least one of the second number (N2) of keyways provided in the outer annulus and at least one of the first number (N1) keyways in the housing (fig. 1A, paras. [0032] & [0033]).
AAPA fails to explicitly teach the outer annulus having a threaded inner circumferential surface with a second thread pitch, and an inner annulus radially inward of the outer annulus, comprising a threaded outer circumferential surface with a thread pitch substantially equal to the second thread pitch (P2), wherein the inner annulus is provided with a third number (N3) of keyways disposed around its circumference; wherein the inner annulus is configured to rotate with respect to the outer annulus to enable alignment of a keyway provided in the inner annulus and a keyway in the outer annulus. However, this would have been obvious in view of the ‘776 reference.
The ‘776 reference is also directed to applying axial force to a component of a bearing assembly (figs. 2-3 & 5, paras. [0033] & [0045]). The ‘776 reference is directed to improving a system that comprises a single annulus threaded to a shaft or housing (fig. 1, para. [0002]). Using a single annulus may require too high a torque for convenient assembly (paras. [0008]- [0009]). The ‘776 reference teaches providing a second inner annulus inward of an outer annulus so that the inner annulus has outer thread engaged with inner thread on the outer annulus, and wherein the thread pitches of the two threads on the outer annulus are different so that rotation of the outer annulus (when the inner annulus is kept stationary) results in the inner annulus translating toward the component less than the amount of translation of the outer annulus toward the component (fig. 5, paras. [0039]-[0040]). This reduces the torque that has to be applied during installation, thus requiring less bulky tooling (paras. [0008] & [0041]). In addition, since the annulus that contacts the component (i.e. the inner annulus) is not rotating during the preloading, no friction is generated between the inner annulus and the component—which also reduces the torque that has to be applied and prevents damage or wear (paras. [0005]-[0006] & [0057]). The ‘776 reference teaches that the annulus’s can be held stationary or rotated via protrusions/keyways 142/144 extending from an axial end thereof (fig. 3, paras. [0037]-[0039)]).
Given the above modification, since the outer annulus is threadably engaged to the housing and inner annulus, and since the housing and inner annulus are capable of being locked together (e.g. via a tool engaged with the keyways of each of the housing and inner annulus), the structure of AAPA et al. is capable of the claimed intended use, of: the inner annulus is configured to be translated axially towards the component upon rotation of the outer annulus when the inner annulus and the housing are rotationally locked to one another
In this case, each of AAPA and the ‘776 reference teach a system for applying an axial load to a bearing within a housing by using an annulus that rotates on an inner thread of the housing. The ‘776 reference teaches that providing a second, inner annulus with a differential thread reduces the torque required for installation and can prevent damage or wear on the component. Further, it would be predicable for the inner annulus to have keyways similarly to the housing and outer annulus of AAPA in order to lock the inner and outer annulus to the housing. Thus, it would be obvious to modify AAPA to comprise a second, inner annulus with a differential thread engaged with inner thread of the outer annulus (so that the inner annulus, when rotationally locked with the housing, translates at a different rate toward the component with respect to the outer annulus when the outer annulus is rotated), and comprising keyways at an axial end thereof to allow torque to be applied to the inner annulus, and, to be aligned and locked with keyways of the outer annulus and housing.
AAPA teaches four first keyways and five second keyways (see fig. 1A of AAPA), thus AAPA et al. fail to explicitly teach the second number (N2) of keyways in the outer annulus is less than the first number of keyways (N1) in the housing. However, this would be an obvious design choice. One of skill in the art appreciates that the number of keyways can vary based on the preferences of a designer, including balancing the manufacturing ease of the annulus with the number of locking positions (see para. [0003] of AAPA discussing the number and density of keyways). In addition, reversal of parts is an obvious modification (see MPEP 2144.04(VI)(A)). Thus, it would be an obvious design choice to reverse the keyways in the housing and outer annulus so that the housing has five keyways and the outer annulus has four keyways. This would still allow at least one keyway of the inner annulus to be aligned with keyways of the housing and outer annulus, and allow torque to be applied to the keyways. In addition, providing more first keyways than second keyways does not seem to be a critical feature of the claimed invention, produce unexpected results, or solve a stated problem (see paras. [0008] & [0009] of Applicant’s originally filed specification which states the second number of keyways may be greater than or less than the first number of keyways).
AAPA et al. fail to explicitly teach the first number (N1) of keyways in the housing is equal to the third number (N3) of keyways in the inner annulus. However, this would be an obvious design choice. One of skill in the art appreciates that the number of keyways can vary based on the preferences of a designer, including balancing the manufacturing ease of the annulus with the number of locking positions (see para. [0003] of AAPA discussing the number and density of keyways). In addition, AAPA teaches the number of keyways in the housing and outer annulus being four and five, respectively (see fig. 1A). Thus, choosing a number of keyways for the inner annulus that is equal the number of keyways of the housing would be an obvious design choice. This would still allow at least one keyway of the inner annulus to be aligned with keyways of the housing and outer annulus, and allow torque to be applied to the keyways. In addition, providing an equal number of keyways in the inner annulus and housing does not seem to be a critical feature of the claimed invention, produce unexpected results, or solve a stated problem (see para. [0036] of Applicant’s originally filed specification, e.g. “The number N3 of inner annulus keyways 236 may be greater than, less than, or equal to the number of housing keyways 214.”).
Regarding claim 2, AAPA et al. further teaches the first thread pitch is coarser than the second thread pitch (para. [0034] of the ‘776 reference, which was used to provide the differential threads as detailed in the rejection to claim 1, above).
Regarding claim 3, AAPA et al. further teaches the first thread pitch is finer than the second thread pitch (para. [0034] of the ‘776 reference, which was used to provide the differential threads as detailed in the rejection to claim 1, above).
Regarding claim 7, AAPA further teaches the component is a bearing assembly (fig. 1B, paras. [0003] & [0033]).
Regarding claim 8, AAPA further teaches a key configured to be simultaneously inserted into two or more of the keyways in the housing, outer annulus and inner annulus (para. [0032)).
Claim 12 recites similar structure of claim 1 wherein the component and annulus’s are reversed so that the annulus’s are secured to an outer thread of an inner housing instead of an inner thread of an outer housing. MPEP 2144.04(VI)(A) states that mere reversal of parts is an obvious modification. Further, the ‘776 reference teaches the clamping system can be used on a shaft or an outer housing (figs. 2-3 & 5, paras. [0033] & [0045]). Thus, it would be obvious to reverse the system of AAPA et al. (as applied to claim 1 above) so that the annulus’s are threaded to an outer thread of a shaft instead of an inner thread of an outer housing.
Response to Arguments
Applicant's arguments filed November 10, 2025 (“the remarks”) have been fully considered. Each of applicant’s remarks is set forth, followed by examiner’s response.
Applicant argues that the claims are in condition for allowance since previously presented claims 4 and 6 have been added to the independent claims, and claim 6 did not stand rejected over any prior art references.
Claim 6 did not previously receive a prior art rejection because it depended from claim 5—wherein claim 5 recited a limitation contrary to claim 6 as detailed in the previous 112(d) rejection. Thus, it was not possible to satisfy each of claims 5 and 6.
Conclusion
Applicant's amendment necessitated the new grounds 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Sunil Singh (571-272-3460). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”