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 .
Claim Rejections - 35 USC § 112
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 1-37 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.
Claims 1, 16 and 26 call for a displacer or the step of displacing. The specification, while listing generic displacers that perform, the function there is no description regarding specific displacers and how they would interact with the actual structure to move the device. The displacer/displacing is a critical aspect of the invention which has not been disclosed or described in any detail that would allow one having ordinary skill in the art to know what Applicant was actually in possession of at the time of filing with regards to the actual structure of the invention. For example the displacer is defined in one embodiment as 224, this is disclosed and later claimed as a linear actuator, however the type of linear actuator is not described in detail. What type of linear actuator is this, the actuator as illustrated is a thin layer of material in the drawings, how does it work to actively translate the bearing? How does the bearing engage with the actuator in order to be driven? With regards to this feature of the device the drawings only appear to be giving a schematical representation of the device/structure and the written description does not provide any specific details of what the actuator is or how it specifically works/interacts with the bearing/protrusion which does not enable one skilled in the art to understand what Applicant was actually in possession of and thus it cannot be said that Applicant has disclosed the actual invention with enough detail that would allow one skilled in the art to understand what was actually invented and what Applicant was in possession of in terms of an actual device. How is the bearing or later the protrusions driven by the actuator? What type of linear actuator is being used?
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 11, 22-25, 28 and 34 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.
Regarding claim 11, it is unclear how the inner bearing can be configured to be coupled to both the rotor and the stator and still function as bearing. Claim 10 differs from claim 11 as the features are provided in the alternative in claim 10 and when recited as both being present in claim 11 it is unclear how the device would function. The issue is the “configured to” language in claim 11 is not linked to any specific configuration or state of the device and thus the claim would cover both being engaged at the same time, however in the case of the disclosure it is one interface element that engages in one mode of operation while the other engages in the second mode of operation, this needs to be included in the claim to clarify how the device is “configured” to be coupled to these parts and still provide a functioning device.
Regarding claim 22, it is unclear how applying a magnetic torque to an air bearing acts to prevent the movement as described in the application. An air bearing functions on the principle of a rotary part moving relative to a stationary part, applying the magnetic torque to this type of bearing does not stop the air bearing from function. In all cases of the invention it is one of the rings of the rolling element bearing, which might form part of the air bearing but is not on its own the air bearing, from moving relative to the other ring of the rolling element bearing so that the air bearing takes over the primary load bearing function. It appears that Applicant might be attempting to claim a feature similar to claim 5 within the method claim which is causing the confusion. In all cases the torque acts to resist movement in the rolling element side of the assembly not the air bearing side, the claim should be amended to make this clear.
Regarding claim 25, it is unclear how the inner bearing, when it is a foil bearing, rotates in an opposite direction of the shaft. When the foil bearing makes the inner bearing element it is either rotating along with the inner bearing ring of the rolling element bearing as a unit with the shaft or the inner bearing ring of the rolling element bearing is locked via interaction with the interface element to the stator which causes the foil bearing to also lock and an air cushion to form between the rotor and the foil bearing. Regardless of what condition the assembly is in the foil bearing is never rotating in an opposite direction relative to the rotary. How is this relationship possible? What structural relationship illustrated in the figures is the configuration that allows for this?
Regarding claim 28, it is unclear how the interfaces are being considered a “protrusion” of the rotor or stator yet the protrusions are displaceable relative to the rotor or a stator. A protrusion is general a part of the feature from what it protrudes from and would be considered a part of that structure, however in this case these “protrusions” move relative to the corresponding element and thus it appears as if applicant is acting as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999).
Regarding claim 34, the claim defines the outer bearing as “engaged” while the inner bearing “rotates”, however it is unclear what Applicant means by “engaged”. Is Applicant attempting to state that the outer bearing is engaged with another part, if so what part? If Applicant means “engaged” as an operation wouldn’t the claim be defining both bearings as functioning at the same time which is contrary to the disclosure? Is Applicant attempting to define one of the two states of operation or is “engaged” meant to defining some structural configuration of the bearing itself, if so what is that?
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) 1-4, 6-10, 12-17, 20-21, 26, 29 and 31-37 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lucas, USP 9,534,629.
Regarding claim 1, Lucas discloses a bearing system comprising: a dual bearing comprising: an inner bearing (52, rolling element bearing); and an outer bearing (54, air bearing); and a bearing engagement system (at 68 or 75) configured to control a rotation of the inner bearing (engages with bearing to prevent relative movement), the bearing engagement system comprising: a displacer (79 or 84) configured to linearly translate at least the inner bearing, displace an interface element, or both (displaces interface element 74 or 82); or an electromagnet (see column 5, line 6 which discloses that 79 could be and electromagnet) configured to generate a magnetic field to apply a magnetic torque to the inner bearing (pushing the plate 74 against the bearing, the magnet pushing force creates a force that resists torque).
Regarding claim 2, Lucas discloses that the dual bearing comprises a hybrid dual bearing wherein the inner bearing is different from the outer bearing (the roller bearing is different from the air bearing making the system a hybrid bearing).
Regarding claim 3, Lucas discloses the dual bearing is free of lubricant (54 is an air bearing or more specifically can be a foil bearing as indicated by 34, these are lubricant free bearings, the rolling bearing is also not disclosed as requiring lubricant).
Regarding claim 4, Lucas discloses that the dual bearing comprises a dual radial bearing wherein the outer bearing is concentric with and surrounds the inner bearing or a dual axial bearing wherein the outer bearing and the inner bearing are adjacent and side-by-side to each other (in all embodiments of Lucas the assembly is a dual radial bearing with the two types of bearings being concentric).
Regarding claim 6, Lucas discloses that the outer bearing comprises a gas bearing, and the inner bearing comprises a ball bearing, a roller bearing, a lubricated bearing, or any combination thereof (the outer bearing 54 is an air or gas bearing while the inner ring is a ball bearing, the balls being indicated by 62).
Regarding claim 7, Lucas discloses that the bearing engagement system comprises the displacer and the electromagnet configured to generate a magnetic field to apply a magnetic torque to the inner bearing (the electromagnet 79 generates a force to displace the disk 74, the end of the magnet assembly that pushes the disk can be viewed as the displacer in this case).
Regarding claim 8, Lucas discloses that the bearing engagement system comprises the displacer comprising one or more linear actuators and one or more tracks (in the case of claim 8 the magnet would form the linear actuator and guiding the plate in its linear movement is the shaft 18 which can be considered a track, as noted above the disclosure is not specific with regards to these elements and thus the limitations must be treated generically).
Regarding claim 9, Lucas discloses that the bearing engagement system further comprising one or more interface elements (70/72 can be considered interfacing elements).
Regarding claim 10, Lucas discloses that at least one interface element of the one or more interface elements is: located on a portion of a rotor and configured to couple at least a portion of the inner bearing to the rotor (the washer(s) 70/72 are on or surround the rotor or shaft 18, when the system is engaged the bearing as a whole, including the washer would be coupled with the rotor and rotate along with the rotor so that the air bearing takes on the function of the bearing element); or located on a portion of a stator and configured to couple at least a portion of the inner bearing to the stator.
Regarding claim 12, Lucas discloses that the bearing engagement system comprises the electromagnet (79) configured to generate a magnetic field to induce a magnetic torque to the inner bearing, wherein the electromagnet is located on a stator or on a rotor (the magnet pushes the plate 74 coupling the two bearing rings together this causes the system of the inner bearing and the shaft 18 to then rotate together thus the magnet must be part of the rotor assembly).
Regarding claim 13, Lucas discloses a vibration dampener (the bump foil element 34 in the air bearing side of the assembly acts as a vibration dampener when the rolling element bearing is in operation).
Regarding claim 14, Lucas discloses a controller configured to control the displacer, the electromagnet, or both (see column 5, lines 43-65 disclosing the use of controller).
Regarding claim 15, Lucas discloses that the controller is configured to stop the rotation of the inner bearing at a predetermined angular position (the system is a rotary system that locks the ball bearing or inner bearing based on operating conditions, regardless of when this occurs the inner bearing is locked at a particular point in time during its rotation, this position is predetermined based on the controller and would relate to an angular position, the claim uses the phrasing “configured to” which is defining the device based on its function rather than what it is, any controller that locks a bearing after a particular amount of rotation or after reaching a particular speed would perform this function).
Regarding claim 16, Lucas discloses a method of controlling a rotation of an inner bearing relative to an outer bearing in a dual bearing comprising: controlling an interaction between the inner bearing and at least one interface element by: laterally displacing the inner bearing, an interface element, or both; applying a magnetic torque to the inner bearing; or both (element 74 is displaced to engage both rings of the inner b earing assembly this is done by the use of a controller that controls this interaction).
Regarding claim 17, Lucas discloses controlling the interaction between the inner bearing and the interface element by laterally displacing the inner bearing, an interface element, or both (74 is laterally displaced).
Regarding claim 20, Lucas discloses applying the magnetic torque to the inner bearing using a magnetic field by controlling one or more electromagnets to control the magnetic field (the magnet is active to control the friction disc creating a counter or reaction force resisting the torque applied to the bearing, as the claim does not recite any particular structure or steps using a controller to activate a magnet to lock relatively rotation components together reads on the claim).
Regarding claim 21, Lucas discloses that applying the magnetic torque to the inner bearing comprises impeding the rotation of the inner bearing to maintain the inner bearing substantially still (when the magnet is active the fiction disc fixes the position of the bearing rings making them “substantially still” relative to one another).
Regarding claim 26, Lucas discloses a system comprising: a rotor (18); a stator (20); a bearing comprising: an inner bearing (52); and an outer bearing (54), the outer bearing connected to the stator (see figure 2 showing the state of the air bearing when it is not functioning as the load support bearing); and a bearing engagement system (68) configured to control a rotation of the inner bearing, the bearing engagement system comprising: a displacer (79) configured to laterally displace at least the inner bearing, displace an interface element (74), or both; or an electromagnet configured to generate a magnetic field to apply a magnetic torque to the inner bearing (see column 5, line 6 and the explanation in the rejection of claim 1 above).
Regarding claim 29, Lucas discloses that the bearing engagement system comprising the electromagnet (79), wherein the electromagnet comprises one or more electromagnets (79 is at least one electromagnet) and further comprising a controller configured to control operation of the one or more electromagnets (see column 5, lines 43-65).
Regarding claim 31, Lucas discloses that the outer bearing comprises a gas bearing, and the inner bearing comprises a ball bearing, a roller bearing, a lubricated bearing, or any combination thereof (the outer bearing 54 is an air or gas bearing while the inner ring is a ball bearing, the balls being indicated by 62).
Regarding claim 32, Lucas discloses that the bearing comprises a radial bearing or an axial bearing (Lucas illustrates a radial bearing assembly).
Regarding claim 33, Lucas discloses that the bearing comprises a hybrid bearing where the inner bearing is different from the outer bearing (the inner bearing is a rolling element bearing and the outer bearing is an air bearing).
Regarding claim 34, Lucas, as best understood, discloses that the bearing system is configured such that the outer bearing is engaged when the inner bearing rotates (when the air bearing is not in operation the top foil engages with 26 as shown in figure 2).
Regarding claim 35, Lucas discloses a vibration dampener (the bump foil element 34 in the air bearing side of the assembly acts as a vibration dampener when the rolling element bearing is in operation).
Regarding claim 36, Lucas discloses a controller configured to control the displacer, the electromagnet, or both (see column 5, lines 43-65 disclosing the use of controller).
Regarding claim 37, Lucas discloses the al bearing is lubricant-free lubricant (54 is an air bearing or more specifically can be a foil bearing as indicated by 34, these are lubricant free bearings, the rolling bearing is also not disclosed as requiring lubricant).
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) 5 and 30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lucas, USP 9,534,629.
Regarding claims 5 and 30, Lucas discloses the reversed configuration as set forth in claims 6 and 31 and thus does not disclose that the inner bearing comprises a gas bearing, and the outer bearing comprises a ball bearing, a roller bearing, a lubricated bearing, or any combination thereof.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to reverse the configuration and make the inner element the gas bearing and the outer element the rolling element bearing in the device of Lucas, since it has been held that a mere reversal of the essential working parts of a device involves only routine skill in the art. In re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955). Furthermore reversing which bearing is which does not change the principle of operation as the air/foil bearing would still carry the load when lift off speed is achieved, however switching the air foil bearing to be the inner ring allows for the air foil bearing to support less of a mass and thus improving bearing performance and reducing imbalance that might result in revolving the rolling element bearing as a whole when the air foil bearing is the outer bearing element as the rolling element bearing in the reversed configuration would be secured to the stator side and thus not moving when the air bearing is operational.
Response to Arguments
Applicant's arguments filed February 11, 2026 have been fully considered but they are not persuasive.
With regards to the rejection under 35 USC 112(a) Applicant argues as if the independent claim(s) state that there is a linear actuator, however this is not the case. The claim states a “displacer” that is “configured” to linearly translate a feature of the device. It is this broader claiming of the invention in combination with the disclosure that is causing the issue above. While it is agreed that the disclosure indicates specific devices like linear actuators, pistons, etc. nothing in the drawings shows any of these devices or how they are included in the system (positioned, installed, actually interact with the components). Because of the lack of specificity in the disclosure regarding how these generic actuating devices are integrated into the invention it is not clear what actual configuration Applicant has invented and turning back to the claim language the claim is not actually limited to one of these examples in the disclosure. The actuation or displacement aspect of the invention is a critical feature of the invention, however Applicant has provided no significant details regarding this part of the invention, taken in context with the broader claim language it is unknown as to what specific structural configurations Applicant was actually in possession of at the time of filing. Applicant points to a number of paragraphs in the disclosure, however most if not all of these paragraphs provided examples of things that could be used or provide an broader over view of things that “may” be included, however none of these paragraphs actual provide a clear description of what Applicant actually possessed. For example, paragraph 0112 discusses the extender 222, the paragraph lists a few options of what the linkage could be but never actually defines how any of these would be incorporated into the device or actually move the linkage illustrated, the bearing or the interface element. When it comes to the displacer feature the specification and drawings can be considered as providing a general overview, however this aspect of the invention is critical to the practice of the invention and to understand what configurations Applicant was in possession of at the time of filing. It is this generalization of the critical aspect of the invention that has necessitated the rejection under 35 USC 112(a). Ultimately the invention is within the moving or movement generating aspect of the device, which as claimed is part of a “bearing system”, however the details of this aspect and the arrangement in the overall bearing system of the invention have not been provided. How are the displacers integrated into the system? How do they attach to the other parts? Where are they attached? Again the drawings appear to, in most cases, illustrate the actuator aspect as a thin layer of material, how is this a piston arrangement, a linear actuator or any of the other actuators listed in the specification? None of the listed actuators are thin layers of material in actual practice. Thus the lack of specificity regarding the actual structure of the invention in the specification and the drawings showing this critical aspect of the invention in what appears to be a schematic representation does not actually provide any detail as to the structural configuration of the invention that Applicant was in possession of at the time of filing.
Regarding the rejections under 35 USC 112(b):
The amendment overcomes the issue raised in claim 9.
With regard to Applicant’s comment regarding claim 10, no specific issue was found in claim 10, however the claim depends from claim 9 which necessitated the claim being listed in the grounds of rejection.
Regarding claim 11, Applicant disagrees with the Examiner’s interpretation of the claim arguing that there is no requirement in the claim for both conditions to be simultaneously present. However nothing in the claim states otherwise and thus the claim must be given its broadest reasonable interpretation which is indefinite as explained above. Ultimate Applicant’s argument is attempting to give claim 11 the same meaning as claim 10, if this is the case wouldn’t that make claim 11 duplicate of claim 10?
Regarding claim 22, Applicant argues that the issue in the claim is one of breadth and not clarity and points to how the middle ring 108 has the torque applied to it. However an overall broad claim can indeed cause a clarity issue. This argument points to a series of structural elements that are not included in the claim and thus is ultimately arguing that the specification explains this but that’s not the issue at hand. The claim lacks any of this specificity and giving the claim its broadest reasonable interpretation leads to the claim as a whole being unclear. Ultimately what applicant is arguing is that 108 makes a part of the air bearing but the issue is that structure is not specifically claimed thus the claim reads as if a standalone air bearing is being controlled in the manner claimed, which it’s not clear how controlling an air bearing in this manner is possible since braking or slowing an air bearing acts to stop the actual bearing function. The invention is a series of nested bearing where one is controlled to promote the function of the other bearing given operational conditions this is not what is being claimed thus the claim is broader than what is disclosed and the features (specific structural elements or arrangements of parts) of the specification are not read into the claim in order to establish clarity, the specification is turned to in order to provide meaning to the claim with regards to the terms used. Similar with regards to claim 25 to address the issue Applicant points to multiple paragraphs of the specification, however none of the features in these paragraphs are read into the claim. The issue is with the claim itself, not what one would take the claim to mean when aspects of the specification are read into it. A claim must be clear on its own, the specification can be used to providing meanings to terms or phrasings but importing full context of the specification into the claim cannot be used to make the claim clear. Ultimately Applicant is pointing to the specification to describe all the processes that must take place in order for the method to be carried out, this is what is missing from the claim and ultimately the claim, based on Applicant’s remarks, would appear to be incomplete as failing to define the conditions and the actual steps that allow the method to be carried out.
Regarding claim 28, Applicant cites definitions for the term protrusion and argues that nothing in the definitions require the narrow reading of the claim that is the basis for the rejection. However, the second definition provided by Applicant states “to jut out from the surrounding surface”, a “rotor protrusion” in that context would be a portion of the rotor that juts out from the rest of the rotor surface, however the part in question is anything but this. While in some cases in the instant application there are traditional protrusions in other cases, and within the context of the instant claim, this feature is an independent and distinct element that can be displaced along the surface of the shaft. Thus in one case the disclosure would be using protrusion in the common sense, while in this case Applicant is calling a separate and distinct element a protrusion which it is not. A separate and distinct element does not protrude from the surface of the element that is attached to as the claim is doing by calling the part a “rotor protrusion”. The element attached to a rotor is not a “rotor protrusion” in this case and using the term consistent with the definition in one instance and then using it contrary to its meaning in another does not aid in establishing clarity in the claim and further questions if “protrusion” is to be given this degree of latitude in its traditional meaning are other claims in the case duplicate or failing to further limit? Ultimately a separate element that is intended to displace along another element is not a protrusion of that second element since it is separate and distinct and calling something a “rotor protrusion” implies that it is a protrusion of the rotor element itself which is not the case.
Regarding claim 34, the issue in the claim is with regards to the intended meaning of engaged and what it structurally requires. To address this issue Applicant points to the specification however the cited portion does not provide any definitive definition for the term nor does it answer the questions raised in the rejection above.
With regards to the prior art rejection Applicant argues that Lucas doesn’t disclose the claimed invention relative to linear displacement of the bearing or friction disc nor does it involve applying a magnetic torque. First the claim does not require both aspects to be present because of the use of multiple “or” recitations. While it is agreed that with regards to the magnetic torque recitation Lucas doesn’t disclose the same as that illustrated and described but the reference discloses using magnetic force to active that braking system, since no structure of the magnetic system is claimed pushing the interface element with a magnetic force results in torque resistance. However, with regards to the first option of the claim Lucas clearly anticipates this requirement. In the case of figure 6 68 pushes 74, 74 is an “interface element” and in figure 7 82 would be an interface element that is moved via unit 84. The claim as drafted does not require all three aspects of the inner bearing being displaced, the interface element being displaced AND the electromagnetic feature to be present as it appears Applicant is implying in the argument. The independent claims also generally list the parts of the invention in order to stay generic to all embodiments disclosed, however this is what is causing part of the issues under 35 USC 112 above, this lack of detail is what allows the claim to be treated broadly allowing a different arrangement like that of Lucas to be applied to the claim.
With regards to the rejection under 35 USC 103 of claims 5 and 30 applicant argues that the proposed change is more than a trivial change in the disclosure of Lucas and would cause axial movement. However in this case the pressing is actuating a breaking/coupling system that wouldn’t necessary overcome the friction force regardless of what element of the bearing is press fit relative to (either on the shaft or inside the housing), thus the bearing would still maintain its function, just the parts would be rearranged. Furthermore, this argument appears to be drawing a conclusion that the pressing force from the displacing element is unlimited, however no evidence of this is found in the disclosure, thus it is fully possible and within the level of ordinary skill in the art to set the system to apply only the force necessary to achieve the function which would be a force far less than the force required to reverse the press fit of a bearing in a housing or on a shaft.
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.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617