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
Amended claim 9 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: Claim 9 has been amended such that it is currently directed to a product, more specifically claim 9 is a product-by-process claim whose 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. (see MPEP 2113).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 9 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Arvand et al. (DE102013202829) of which attached corresponding English translation is cited in view of Deng et al. (CN112662833) of which attached corresponding English translation is cited, Li et al. (CN114058829) of which attached corresponding English translation is cited and Fujimatsu et al. (U.S. Patent Publication No. 2016/0201174).
Regarding Claim 1, Arvand teaches a method for producing sliding bearing components with a high degree of toughness, comprising:
providing at least one sliding bearing component made of a steel material, wherein the steel material comprises 0.70 - 1.1 % by weight of carbon ([0111]: These typically have carbon (C) contents between 0.93 wt. % and 1.05 wt. %.) and a mixture of alloying elements of more than 1.75 % by weight and less than 3.4 % by weight ([0111]: 100CrMnMoSi8-4-6; according to the chemical composition data, 100CrMnMoSi8-4-6 contains between 3 wt. % and 3.75 wt. % of combined weight of manganese, chromium and silicon.) (Since both carbon wt. % and a mixture of alloying elements wt. % of Arvand overlap with the claimed wt. % ranges, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to find an optimal range of chemical composition through a routine optimization that would result to a desired mechanical property of the steel material. According to MPEP § 2144.05(I), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. According to MPEP 2144.05 (II), generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.), wherein the mixture of alloying elements comprises 0.50-0.9% by weight of silicon, 0.9-1.3% by weight manganese, 1.3%-1.75% by weight chromium ([0111]: 100CrMnMoSi8-4-6; according to the chemical composition data, 100CrMnMoSi8-4-6 contains 0.4-0.6% of Si, 0.8-1.1 of Mn, 1.8-2.05 Cr, 0% of Ni, 0.5-0.6% of Mo, 0% of V, max. 0.05% of Al, max. 0.015% of S, max. 0.025% of P, 0% of Ti, 0% of N, 0% of O, 0% of Ca, max. 0.3% of Cu) (Since wt. % of each of the alloys elements in 100CrMnMoSi8-4-6 either overlaps or is within or merely close to the claimed range, a prima facie case of obviousness exists. According to MPEP § 2144.05(I), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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. According to MPEP 2144.05 (II), generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.),
austenitizing the at least one sliding bearing component in a temperature range from 835°C -870°C) such that austenite and carbides are present side by side in the microstructure of the steel material (According to paragraph [0012] of the current application, austenitizing the rolling bearing steel alloy such as 100CrMnMoSi8-4-6 (see [0039]) at a temperature ranging from 835°C to 870°C results austenite and carbide side-by-side in the microstructure of the steel alloy material. Therefore, when the same bearing steel alloy 100CrMnMoSi8-4-6 ([0111]) of Arvand undergoes the austenitizing process at a temperature ranging from 835°C to 870°C according to Arvand [0104], the bearing steel alloy of Arvand would also form austenite and carbide in its microstructure.),
quenching the at least one sliding bearing component to a temperature which is 10 to 20 K below a martensite start temperature of the steel material, by transferring the sliding bearing component to a warm bath at a temperature in the range of 170 to 220°C ([0105]: 10°C to about 200°C) (In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art," a prima facie case of obviousness exists. See MPEP § 2144.05(I)), whereby martensite is formed ([0105]: The quenching process results in the formation of martensite, at least partially…) and untransformed retained austenite is maintained, and wherein carbon migrates from the formed martensite into the untransformed retained austenite (Again, the bearing component of Arvand would have untransformed retained austenite as a result of performing the same austenitizing and quenching steps as the current application.),
cooling the at least one sliding bearing component to room temperature after quenching ([0108]: post-cooling to a temperature between approximately 5°C and 10°C),
tempering the at least one sliding bearing component after cooling, wherein the sliding bearing component is heated to a temperature in the range of 220 to 245°C ([0109]: tempering at 170°C to 390°C for a predetermined period of time) (In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. See MPEP § 2144.05(I)), wherein a martensitic matrix with a retained austenite content in the range of 15 % and 25 % by volume is obtained as the material structure (Again, the bearing component of Arvand would have a martensitic matrix with a retained austenite content in the range of 15 % and 25 % by volume as a result of performing the same process on the same material as the current application.), and
subsequently cooling the sliding bearing component to room temperature (It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to cool the tampered bearing component to room temperature when the heat treatment processes have been performed.), forming the sliding bearing component with a high degree of toughness.
Arvand does not explicitly teach providing at least one rolling bearing component made of a steel material, wherein the steel material has a degree of purity such that in a microscopic examination of special steels for non-metallic inclusions in accordance with DIN 50602 (1985 edition) on average less than 100 non-metallic inclusions occur per 1000 mm2 of the polished surface, holding the bearing component in a warm bath for 14 to 25 min during quenching and heating the bearing component at a tempering temperature for a period of 1 to 4 hours.
Although Arvand teaches a method of making a slide bearing, it teaches that its bainitic hardening process can be also used to achieve a targeted and/or reproducible hardness of a corresponding rolling bearing ring in paragraph [0016]. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the method Arvand to manufacture other types of bearing including a rolling bearing component as it would benefit from the same high degree of toughness of the steel material achieved by the method of Arvand.
Deng teaches that because a rolling bearing is subjected to a strong point load or surface load, it requires high purity (low number of non-metallic inclusions). (Background, 1st paragraph) Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a steel material having a small amount of non-metallic inclusions including 100 per 1000 mm2 of the polished surface according to DIN 50602 in order to improve mechanical properties of the rolling bearing component, such as enhanced strength, hardness, ductility and corrosion resistance.
Li teaches performing isothermal quenching of a bearing outer ring in 180 °C oil for 25 min (page 2, Step S4).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to holding the rolling bearing component of Arvand in a warm bath for a certain amount of time including 25 min during quenching as taught by Li in order to form desired martensite as suggested in Li page 2, Step S4.
Fujimatsu teaches tempering the bearing component for a period of 90 minutes ([0051]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to temper the rolling bearing component of Avand for a certain amount of time including 90 minutes as taught by Fujimatsu in order to obtain a desired hardness as suggested by Fujimatsu [0051].
Regarding Claim 4, Arvand/Deng/Li/Fujimatsu teach the method according claim 1, wherein the steel material of the at least one rolling bearing component comprises 0.7 - 1.05 % by weight of carbon (Arvand [0111]: These typically have carbon (C) contents between 0.93 wt. % and 1.05 wt. %) and the mixture of alloying elements of more than 2.95 % by weight (Arvand [0111], 100CrMnMoSi8-4-6; According to the chemical composition data, 100CrMnMoSi8-4-6 contains between 3 wt. % and 3.75 wt. % of combined weight of manganese, chromium and silicon.). (Since carbon wt. % of Arvand overlap with the claimed ranges, a prima facie case of obviousness exists. According to MPEP § 2144.05(I), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. According to MPEP 2144.05 (II), generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.)
Regarding Claim 5, Arvand/Deng/Li/Fujimatsu teach the method according to claim 4, wherein the steel material comprises the mixture of alloying elements of more than 3.05 % by weight (Arvand [0111]: 100CrMnMoSi8-4-6; according to the chemical composition date, 100CrMnMoSi8-4-6 contains between 3 wt. % and 3.75 wt. % of combined weight of manganese, chromium and silicon.). (Since the wt. % of the mixture of alloying elements of Arvand overlaps with the claimed range, a prima facie case of obviousness exists. According to MPEP § 2144.05(I), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. According to MPEP 2144.05 (II), generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.)
Allowable Subject Matter
Claim 7 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.
Response to Arguments
Applicant's arguments filed on 5/6/2026 have been fully considered but they are not persuasive. On page 11 of the applicant’s argument, applicant argues that the references fail to teach newly added ranges in Claim 1. Examiner would like to note that although DIN EN ISO 683-17:1999 cited in the reference Arvand [0111] does not teach the newly added ranges exactly, corresponding ranges in DIN EN ISO 683-17:1999 either overlap or are within or merely close to the claimed range, and therefore, a prima facie case of obviousness exists. According to MPEP § 2144.05(I), in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. According to MPEP 2144.05 (II), generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
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 JUN S YOO whose telephone number is (571)270-7141. The examiner can normally be reached 9AM-5PM.
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/JUN S YOO/Primary Examiner, Art Unit 3726 8/5/2026
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