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.
Specification
The disclosure is objected to because of the following informalities:
The disclosure should include a cross reference to related applications section, see 37 CFR 1.79 and MPEP 211.
The specification also includes a list of reference characters at the end which is not required in US practice and can be deleted. However, if Applicant wishes to keep the list, the list should be amended to include all the reference characters used in the application in order to be complete.
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.
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 term “innumerable” in claims 1 and 5 is a relative term which renders the claim indefinite. The term “innumerable” 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. The term “innumerable” by definition is not quantifiable and because of this it is unclear where the data collection should stop. Furthermore it is unclear how the positions themselves are “innumerable” when the system is fixed since there are a finite number of positions/directions that the cage can move relative to the ball in the pocket. Ultimately the system is limited to movement defined between the ball and the cage, while this can be broken into hundreds, thousands or even hundreds of thousands positions with infinitely small changes in position the system is closed and thus not innumerable.
Claims 1 and 5 also define the ratio as Ri/Re and states that Ri is the maximum diameter and Re is the minimum diameter, however the claim then states the ratio is equal to or smaller than 0.900 (or 0.990 in clm 5) and it is unclear how this is possible. Placing a max over min would result in ratio values greater than 1 yet the claim is reciting the opposite, how is this possible?
The last clause of claims 1 and 5 as a whole are also 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 2, 6 and 7 also define the same ratio with the value being less than 1, the recitation in these claims is indefinite for the same reason as explained above.
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 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, see rejection of “innumerable” above. 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 innumerable 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 soon 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 guiding surface and the 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 innumerable 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 guiding surface is provided on the inner peripheral surface of the outer ring, the 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).
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