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 radial clearance formed between the pocket and the rolling element (clm 5) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered. The specification specifically states that a uniform pocket in the radial direction is one that does not have the radial pocket clearance in paragraph 0002, all the drawings in the application illustrate pockets that are uniform in the radial direction and thus a pocket that includes a radial clearance has not been illustrated.
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.
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 1-8 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.
The last clause of claims 1 and 5 as a whole are unclear as to what structure the recitation actually limits the invention to. The last clause is defining the cage based of a scatter diagram that can be produced and a data analysis of that scatter diagram, this does not define the structure of the cage that allows the diagram to be produced and thus it is unclear what structure the claim is actually intending for the cage to include. Because of this the last clause of the claim is ultimately defining a function of the cage based on the scatter diagram it can produced and is not reciting any specific cage structure and is ultimately functioning the same as an unlimited functional recitation necessitating the rejection under 35 USC 112(a) below.
Regarding claim 2, it is unclear how, just by being a large pocket and a small pocket, the specific ratio is set. The movement that is plotted by the scatter diagram is controlled/limited by a number of different factors including space between the cage and the rings, any features on the cage that might contribute to different degrees of localized movement (flat spot in figure 12) and ball diameter. How does the pocket size itself set the ratio?
Claims 6 and 7, similar to claim 2, are defining the ratio as being set by the guided surface and the guiding surface, however the movement is controlled by a number of different factors as explained in the rejection of claim 2 above and thus it is further unclear how the surfaces features in claims 6 and 7 themselves set the ratio.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As noted in the rejection of claims 1 and 5 above the claims are defining the invention based on the scatter diagram that can be produced based on relative movement between the cage and rolling element which is ultimately plotting a function of the invention. However there is no specific structural features linked to the cage or the ball in the claim and thus any pocket and ball relationship could read on the claim limitation while the specification is specifically linked to oversized circular pockets. In other words the claim could cover different pocket shapes, using different size rollers in each pocket or even different structures in the bearing that can control/limit the relative movement of the cage or rolling element. Ultimately this functional recitation can cover any number of combinations of values or features that can perform the function and is ultimately an unlimited functional recitation that is not covered by the written description which contributes the invention to very specific relationships. The claims therefore cover other possible permutations that there is no evidence in the record that Applicant considered or was in possession of at the time of filing.
In addition, the claimed ratio is based on executing data analysis and inscribing best fit lines/circles to the data collected. These circles will change based on the amount of data corrected, this amount not being specified by the claim. Furthermore, setting a best fit line in itself is subjective in nature and two individuals could analyze the same data set but set two different circles that don’t meet the ratio requirement and thus it would be possible for someone to conduct an analysis on a cage and conclude that it does meet the requirement of the claim while another could conclude it does not.
In other words the recitation does not recite the particular structure which accomplishes the function or achieves the result. Without reciting the particular structure, all means or methods of resolving the problem or performing the function may be encompassed by the claim (i.e. unlimited functional language, and in this case can include other pocket shapes, etc. not considered or discussed by Applicant). The amount of data collected and the specific analysis is also subjective and thus even if every known cage was subjected to the same analyses one observer might concluded a particular cage/ball combination reads on the invention while another may not. In this case, the specification only provides support for the particular embodiment and particular structure/dimensions that allow for the stated functions to occur and the same scatter plot data to be collected. One of ordinary skill in the art would not know from the claim terms what structure or steps are encompassed by the claims. In other words one of ordinary skill in the art would not have knew every possible structural permutation that allows for the stated function to occur. Thus the specification is not commensurate in scope with the claims. Please see Supplementary Examination Guidelines for Determining Compliance With 37 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162 (Feb. 9, 2011) and MPEP 2173.05(g).
The limitation presented by the claims represents a genus because it encompasses more than one species. See MPEP § 2163(II)(A)(3)(a). The genus includes any modification to the predetermined parameters that could achieve the function or even features not related to these parameters. Generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1171 (Fed. Cir. 2010) (en banc) ("[A]n adequate written description of a claimed genus requires more than a generic statement of an invention’s boundaries."). Where the specification does not provide sufficient evidence that the inventor invented a generic claim but rather only contemplates a single, non-generic embodiment (the specific ranges discussed), the written description requirement is not satisfied. LizardTech, Inc. v. Earth Res. Mapping, Inc., 424 F.3d 1336, 1344-45, 76 USPQ2d 1724, 1731-32 (Fed. Cir. 2005). The claims are currently constructed using unlimited functional recitations thus being generic to all species both disclosed and non-disclosed, see MPEP 2173.05(g).
In addition the requirement for experimentation in this case is extremely high as it would require every known and future cage/ball combination to be subjected to the same analysis to determine infringement, however as noted above this data analysis is subjective. Because of this prior art is being applied based on the disclosed structure that allows the scatter diagram to be made in the first place, that being pockets of varies sizes at different locations around the circumference, any reference showing this feature will be considered as anticipating the claim limitation as the same data set could be collected and manipulated/analyzed in a manner that produces the same result.
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) 1-3 and 5, as best understood, is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kenmochi, USP 8,985,859.
Regarding claim 1, Kenmochi discloses a rolling bearing, comprising: an inner ring (illustrated in prior art figure 8a as 84, the invention is directed toward an improved cage that would be placed in combination with the bearing of the prior art figure) and an outer ring (87) configured to rotate relative to each other through intermediation of a plurality of rolling elements (86); and a cage (11, 31, 41, 51, 61, 71) having an annular ring shape and having a plurality of pockets (14 and 15), which are formed at intervals in a circumferential direction, and are configured to accommodate the rolling elements individually and respectively, wherein, when an area enclosed by a line connecting outer edges of a scatter diagram obtained by plotting plural positions, at which the cage located at a neutral position is allowed to exist without contact with the inner ring, the outer ring, and the rolling elements, on a two-dimensional coordinate system, is defined as a cage movable area, a ratio Ri/Re of a maximum inscribed circle diameter Ri of the cage movable area to a minimum circumscribed circle diameter Re of the cage movable area is equal to or smaller than 0.900 (Figures 2a-2l show different pocket configurations that include one pocket larger than another and figures 3-7 show different arrangements of the large and small pockets, these configuration would allow for movement in some directions that are different then movements of the others because the balls would contact the smaller pockets sooner in different directions of motions, this would produce a non-circular scatter plot if subjected to the same analysis and thus, as best understood, would read on the claimed invention).
Regarding claim 2, Kenmochi discloses that each of the plurality of pockets is formed as one of a large pocket (15) and a small pocket (14) that are different from each other in circumferential dimension, thereby setting the ratio Ri/Re to be equal to or smaller than 0.900.
Regarding claim 3, Kenmochi discloses that the large pocket (15) comprises a plurality of large pockets, and wherein large pocket groups each comprising an array with one or more large pockets are arranged at equal intervals in the circumferential direction (see figures 5 and 6 which show groups of large pockets 15 separated by small pockets 14).
Regarding claim 5, Kenmochi discloses a rolling bearing, comprising: an inner ring (illustrated in prior art figure 8a as 84, the invention is directed toward an improved cage that would be placed in combination with the bearing of the prior art) and an outer ring (87) configured to rotate relative to each other through intermediation of a plurality of rolling elements (86); and a cage (11, 31, 41, 51, 61, 71) having an annular ring shape and having a plurality of pockets (14 and 15), which are formed at intervals in a circumferential direction, and are configured to accommodate the rolling elements individually and respectively, the cage comprising an annular guided surface configured to be guided by an annular guiding surface provided on an inner peripheral surface of the outer ring or an outer peripheral surface of the inner ring (the inner and outer circumferential surfaces can function as guide surfaces based on relative movement between the balls and cage, specifically the inner surface as shown in figure 8b), wherein a radial clearance formed between the annular guiding surface and the annular guided surface is smaller than a radial clearance formed between a pocket inner surface of the cage and the rolling element (Applicant states in paragraph 0002 that a uniform pocket in the radial direction is considered a pocket with infinite radial clearance, applying this same meaning to Kenmochi the finite clearance between the cage and the rings is smaller than the infinite clearance between the ball and pocket), and wherein, when an area enclosed by a line connecting outer edges of a scatter diagram obtained by plotting plural positions, at which the cage located at a neutral position is allowed to exist without contact with the inner ring, the outer ring, and the rolling elements, on a two-dimensional coordinate system is defined as a cage movable area, a ratio Ri/Re of a maximum inscribed circle diameter Ri of the cage movable area to a minimum circumscribed circle diameter Re of the cage movable area is equal to or smaller than 0.990 (Figures 2a-2l show different pocket configurations that include one pocket larger than another and figures 3-7 show different arrangements of the large and small pockets, these configuration would allow for movement in some directions that are different then movements of the others because the balls would contact the smaller pockets soon in different directions of motions, this would produces a non-circular scatter plot if subjected to the same analysis and thus, as best understood, would read on the claimed invention).
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) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kenmochi, USP 8,985,859.
Kenmochi further discloses that the circumferential dimension of the large pocket can be greater than that of the small pocket (see figures 2a-2l where in every embodiment the circumferential dimension between the pocket shapes is different).
Kenmochi does not disclose that a difference in circumferential dimension between the large pocket and the small pocket is equal to or larger than 0.1 mm.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to set the range of the difference in the circumferential direction of the pockets to 0.1mm or larger, since it has been held that where the general conditions of a claim are disclosed in the prior art (different sizes in the circumferential direction), discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim(s) 6 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kenmochi, USP 8,985,859, in view of JP2008-196589 (JP589).
Regarding claim 6, Kenmochi does not disclose that the annular guiding surface is provided on the inner peripheral surface of the outer ring, the annular guided surface is provided on an outer peripheral surface of the cage, and a straight portion parallel to an axis parallel plane extending along an axis of the rolling bearing is provided on the guided surface, thereby setting the ratio Ri/Re to be smaller than 0.990.
JP589 teaches an outer ring guided cage (guiding surface on the outer ring raceway and the guided surfaces is the outer periphery of the cage) wherein a straight portion (21) that extends parallel to the axis of the rolling bearing (extends parallel when the cage is fully inserted and rotated into proper position) is provided.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Kenmochi and add flat spots on the outer peripheral surface of the cage, the guided surface, that extend parallel to the axis of the bearing, as taught by JP589, for the purpose and predictable result of providing the cage with a reduced diameter section which allows for the cage to be easily inserted into bearing assemblies (the purpose of the flat spots in JP589 is so that the cage can clear the narrowed axial ends of the outer ring, this is evident in figure 5).
Regarding claim 8, Kenmochi in view of JP589 discloses that the straight portion comprises a plurality of straight portions provided at equal intervals in the circumferential direction (two portions 21 are provided 180 degrees apart to allow for the cage to be inserted in JP589).
Response to Arguments
Applicant's arguments filed July 6, 2026 have been fully considered but they are not persuasive.
Regarding the drawing objection, Applicant states that replacement figure 16a resolves the issue, however is said to be showing the graphical representation of the invention according to the specification. The graphical representation does not actually show the claimed structure of the bearing and thus the drawings remain object to for not showing a physical bearing with the features recited by the claim.
Regarding the rejections under 35 USC 112, Applicant does not specifically address the rejections as applied to the dependent claims but rather the arguments focus on the issues raised relative to the independent claims. The independent claims remain rejected for the reasons above and further addressed below, the dependent claims remain rejected for the same reason however there is no specific argument regarding these claims to respond to.
In responding to the rejection under 35 USC 112(b) Applicant states at the top of page 2 in the remarks that “The cage movable area is established according to factors such as shapes and dimensions of the cage…In other words, the rolling bearings of claims 1 and 5 are characterized by the selection – from among a virtually infinite combinations of cages, outer rings, inner rings and rolling elements” that result in the respective ratio.” This is ultimately the issue with the claim, the structure which Applicant has invented has not been claimed but rather the result of a data analysis of the bearing is being claimed. The same analysis can be done on this “virtually infinite combination” and result in other combinations of features not considered by Applicant reading on the claimed invention. This could be inclusive of a vast amount of bearings already invented and currently on the market but the claim as presented would cause these current bearings to be infringing on the new patent, if issued. Because of this “virtually infinite” number of combinations it cannot be said that the “structures are clearly defined” as Applicant is arguing. What structure of cage, rings and rolling elements was Applicant specifically in possession of at the time of filing? In this case it is at best that which is illustrated however Applicant’s argument that there are infinite combinations supports the position taken in the rejection under 35 USC 112a. Because there are infinite possibilities/combinations it cannot be said that Applicant as adequately defined or claimed a structural improvement to a bearing and thus the rejection is maintained for the reasons stated in the rejection above and the remarks.
With regards to the prior art rejection Applicant argues that Kenmochi does not disclose or suggest the claimed cage movable area or the claimed ratio. However, the rejection does not state that Kenmochi explicitly discloses this. What the rejection states is that based on a similarity of the structure the device of Kenmochi would produce the same scatter diagram that Applicant is claiming. Again the scatter diagram and resulting ratio taken from that diagram is not structurally defining the invention or limiting the bearing to any particular structure. This recitation is defining a result of the structure but the result of a structure can be achievable by other structural combinations, this is the reason for the rejection under 35 USC 112(a), the claims also remain rejected under 35 USC 112(b) as the structure that this is intended to limit the claim to is unclear, this cannot be infinite as Applicant previously argues as the claim would then anticipate previous and future bearing combination of which Applicant was not clearly in possession of at the time of filing. Thus, as best understood the above conclusion was reached, Applicant is not arguing that the conclusion reached based on the current facts in incorrect but rather arguing that the reference does not explicitly or implicitly address the claim recitation, however because of the lack of any explicit or implicit recitation of specific structural limitations what the claim structurally requires is unknown. Differentiating claims based on structure rather than function or result is required as a structural claim defines an invention by what it is rather than what it does or results in achieves ensuring clarity as to what the invention actually is. In this case the lack of any structure regarding this feature provides no certainty as to what Applicant has invented or what the claim actually protects as a structural invention. See MPEP 2111.05, 2114, 2173 and 2184.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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