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 .
Information Disclosure Statement
The listing of references in the PCT international search report is not considered to be an information disclosure statement (IDS) complying with 37 CFR 1.98. 37 CFR 1.98(a)(2) requires a legible copy of: (1) each foreign patent; (2) each publication or that portion which caused it to be listed; (3) for each cited pending U.S. application, the application specification including claims, and any drawing of the application, or that portion of the application which caused it to be listed including any claims directed to that portion, unless the cited pending U.S. application is stored in the Image File Wrapper (IFW) system; and (4) all other information, or that portion which caused it to be listed. In addition, each IDS must include a list of all patents, publications, applications, or other information submitted for consideration by the Office (see 37 CFR 1.98(a)(1) and (b)), and MPEP § 609.04(a), subsection I. states, “the list ... must be submitted on a separate paper.” Therefore, the references cited in the international search report have not been considered. Applicant is advised that the date of submission of any item of information in the international search report will be the date of submission of the IDS for purposes of determining compliance with the requirements for the IDS with 37 CFR 1.97, including all timing statement requirements of 37 CFR 1.97(e). See MPEP § 609.05(a).
The listing of references in the specification is also not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Drawings
Color photographs and color drawings are not accepted in utility applications unless a petition filed under 37 CFR 1.84(a)(2) is granted. Any such petition must be accompanied by the appropriate fee set forth in 37 CFR 1.17(h), one set of color drawings or color photographs, as appropriate, if submitted via the USPTO patent electronic filing system or three sets of color drawings or color photographs, as appropriate, if not submitted via the via USPTO patent electronic filing system, and, unless already present, an amendment to include the following language as the first paragraph of the brief description of the drawings section of the specification:
The patent or application file contains at least one drawing executed in color. Copies of this patent or patent application publication with color drawing(s) will be provided by the Office upon request and payment of the necessary fee.
Color photographs will be accepted if the conditions for accepting color drawings and black and white photographs have been satisfied. See 37 CFR 1.84(b)(2).
Figures 11a and 11b appear to be colored photos or images, however if these are not colored images then the issue would be that the figures do not comply with 37 CFR 1.84(l) which requires the figures to have sufficiently dense and dark lines, the gray scale in these figures does not comply with this requirement.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
In this case the abstract does not include any indication of a machine or apparatus which the feature of the rivet hole is in, the abstract should reference the ball bearing which is the part actually being claimed.
The disclosure is objected to because of the following informalities:
Paragraph 0011, “Bases” should be - -Based- -.
Appropriate correction is required.
The listing of reference characters at the end of the disclosure is not a requirement in US practice and can be removed. If Applicant wished to keep the list then the list should include all the reference characters used in the application, currently at least 6, 7, B, A and m are missing. Also the T in the list should be - -t- - so that character is consistent between the drawings and specification.
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Objections
Claims 1, 4 and 7-10 are objected to because of the following informalities:
Claim 1, line 2 should be formatted to have the same indent as line 3.
Claim 1, line 15 and line 16 should each be indented one additional time as this is a separate/sub grouping of features after “includes:” in line 14.
Claim 1, lines 22 and 22 should also be indented one additional time.
Claim 1, lines 24 and 26 should be indented two additional times as these requirements are a second sub group within the group of features of the second annular member.
Claim 1, line 26, “surface against” should be - -surface which abuts against- -.
Claim 1, lines 29, 32 and 34 should be indented one additional time.
Claim 1, lines 38 and 40 should also be indented one additional time.
Claim 1, line 38, “axially change” should read - -change along an axial direction--.
Claim 4, line 4, “axially change” should read - -change along an axial direction--.
Claim 4, line 7, “surface against” should be - -surface which abuts against- -.
Claims 7, 8, 9 and 10 include the same recitations as claim 4 and should be amended in the same 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.
Claim 1-10 is 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.
The term “gradually” in claim 1, line 40, is a relative term which renders the claim indefinite. The term “gradually” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. What degree of tapering is considered gradual?
Claims 4 and 7-10 also uses the term “gradually” and are indefinite for the same reason.
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 6 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. Claim 6 is defining an intended use of the device, it does not further limit the structure of the bearing itself or more specifically the cage to which the disclosure of the invention is directed to. The intended use of a device does not structurally limit a claim that is concerned with the specifics of a subcomponent unless there is some specific, additional, feature required for the device to be used within the larger device, in this case there is no evidence that an additional feature would be required.
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) 1-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Itagaki, USP 9,624,976.
Regarding claim 1, Itagaki discloses a ball bearing (1) comprising: an inner ring (3); an outer ring (5) arranged radially outwardly of, and coaxially with, the inner ring (3); a plurality of balls (6) disposed between the inner ring (3) and the outer ring (5) so as to be circumferentially spaced apart from each other; and an iron plate rivet crimping cage (7, disclosed as steel in column 9, line 37-40, the same iron based plate as in the instant application) retaining the balls (6), wherein the iron plate rivet crimping cage (7) includes: a first annular member (8a or 8b, or alternatively two 8b style members can be used, see column 15, lines 56-64) formed of a steel plate (column 9, lines 37-40); a second annular member (8b) formed of a steel plate (column 9, lines 37-40), and axially opposed to the first annular member (8a or alternatively another one of 8b); and a plurality of rivets (9a/9b) coupling the first annular member (8a/8b) and the second annular member (8b) together, wherein the first annular member (8a/8b) includes: arc-shaped first pocket wall portions (10a) receiving the respective balls; and first flat plate portions (11a) disposed to circumferentially alternate with the first pocket wall portions (10a), and each having a first rivet hole (12a) axially extending through the first annular member, and, wherein the second annular member (8b) includes: arc-shaped second pocket wall portions (10b) receiving the respective balls; and second flat plate portions (11b) disposed to alternate with the second pocket wall portions (10b), and each having: a second rivet hole (12b) axially extending through the second annular member (8b); and, an abutment surface (surface facing 11a) [which abuts] against a corresponding one of the first flat plate portions (11a), and wherein each of the rivet (9a/9b) includes: a rivet shaft (best indicated by reference character 18, all rivets have a shaft portion) inserted through a corresponding one of the first rivet holes (12a) of the first flat plate portions (11a) and a corresponding one of the second rivet holes (12b) of the second flat plate portions (11b); a pre-formed head (14/14a) formed at one end of the rivet shaft, and axially engaged with the corresponding one of the first flat plate portions (11a); and a crimped head (at 15a) formed at the other end of the rivet shaft, and axially engaged with a corresponding one of the second flat plate portions (11b), and wherein each of the second rivet holes (12b) has an inner periphery constituted by: a cylindrical shear surface (28) having a constant inner diameter that does not axially change [does not change along an axial direction]; and a tapered fracture surface (29a) gradually radially expanding from the shear surface (28) toward a corresponding one of the abutment surfaces of the second flat plate portions (when two halves 8b are used the holes will expand toward the abutting surfaces regardless of which half the rivet is first positioned in).
Regarding claim 2, Itagaki discloses that a nitrided layer is formed on a surface of the first annular member and a surface of the second annular member (see column 10, line 6-38 and column 14, lines 10-22).
Regarding claim 3, Itagaki disclose that the nitrided layer is formed on the entire inner peripheries of the second rivet holes, and an inner periphery of each of the first rivet holes has a non-nitrided surface that is not formed with the nitrided layer (based on the disclosure in column 10, lines 6-38 one of the cage halves (the second) is treated without a rivet in place, thus the entirety of the rivet hole is nitrided, the other cage half is treated with the rivet in place and thus in the area where the rivet and hole contact there is no nitride layer).
Regarding claims 4, 7, 8, 9 and 10, Itagaki discloses that the inner periphery of each of the first rivet holes (12b when two halves 8b are used) is constituted by: a cylindrical shear surface (28) having a constant inner diameter that does not axially change [does not change along an axial direction]; and a tapered fracture surface (29a) gradually radially expanding from the shear surface (28) of the first rivet hole (12b) toward a corresponding one of abutment surfaces of the first flat plate portions [which abuts] against the respective second flat plate portions, and wherein L > 2t/3 is satisfied, where L is an axial length of the shear surface (28) of the inner periphery of the first rivet hole of each of the first flat plate portions, and t is a thickness of the each of the first flat plate portions (in the case of Itagaki this correspond to the press fit margin X where the rivet is pressed into the cylindrical portion of the hole and the thickness Y of the cage half, in column 11, line 31-column 12 line 10 this is disclosed as X=(0.5-0.9)Y or in other words the press fit margin or length of shear surface in contact with the rivet is 50-90 percent of the total thickness Y, the equation by Applicant rewritten is stating that L is greater than two thirds of t or 66%, the range disclosed by Itagaki anticipates this value).
Regarding claim 5, the recitation of “cold-rolled” is a product by process recitation defining how the steel plate that makes the retainer halve is formed, this is not structurally limiting, see MPEP 2113. In this case Itagaki discloses the use of steel plate as explained in the rejection of claim 1 above and thus the claim is anticipated. See alternate rejection below.
Regarding claim 6, the claim is defining an intended use of the bearing and is not further structurally limiting the bearing itself. The intended use of the device does not provide a patentable distinction of the bearing itself over the prior art of record. However it is noted that Itagaki does disclose the general field of automobiles in the technical field portion of the disclosure.
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.
The following rejection is made as an alternative to the rejection above if in the future it is determined that “cold-rolled” steel provides some distinguishing structure.
Claim(s) 5 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Itagaki, USP 9,624,976, in view of Sasaki, US PGPub 2018/0187722.
Regarding claim 5, Itagaki does not disclose cold-rolled steel plate being used to make the cage halves.
Sasaki teaches the use of cold-rolled steel plate (see paragraph 0036) to make a similar type of cage.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Itagaki and use cold-rolled steel plate, as taught by Sasaki, 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.
Claim 9 remains rejected for the same reason as described in the rejection under 35 USC 102 above.
The following rejection is being made in anticipation of the actual larger overall device being claimed in a manner other than intended use.
Claim(s) 6 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Itagaki, USP 9,624,976, in view of Ueno, USP 9,709,095.
Regarding claim 6, while disclosing the use of the bearing being in an automobile (see Technical Field), Itagaki does not disclose the specifics such as used as a bearing supporting a rotary shaft of one of an automotive transmission, an automotive engine accessory, a running motor of an electric vehicle and a speed reducer for reducing a rotational speed of a running motor of an electric vehicle.
Ueno teaches that similar bearings can be used to support automotive transmissions/shafts and differentials (see column 1, lines 10-19 and column 5, lines 1-4).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Itagaki and place the bearing in any previously known device that also used rolling element bearings, including shafts of transmission arrangements in an automobile, as taught by Ueno, since substituting one known bearing for another provides the same predictable result of rotatably supporting one component relative to another.
Claim 10 remains rejected for the same reason as described in the rejection under 35 USC 102 above.
Conclusion
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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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617