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 configuration with both ends having through holes now covered by claim 13 must be shown or the feature(s) canceled from the claim(s). Paragraph 0076 states that a hole 19j can be in the convex part 19b but such an embodiment has not been shown. No new matter should be entered.
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 Objections
Claim 22 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 12. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
In this class there is only a minor difference in the wording and the order in which features are positively recited but all the structural elements are the same between the two claims.
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.
Claim 7 is 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.
Claim 7 states that the pin is screwed into a female screw hole, however in the embodiment(s) that use a female screw hole the hole is in the form of a blind bore and thus the pin does not protrude on both ends as require by claim 1. When the pin protrudes from both ends a nut is used to secure the pin in place or the pin is bent and there is no female screw hole in one of the groove walls and thus the claim is presenting a combination not disclosed in the original filing.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 4 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 4, the claim states that the restricting pin passes through the first groove side and abuts the second groove side, however it is unclear how it is possible for the pin to “abut” in the context as set forth by the disclosure when claim 1 has been amended to state that the two ends of the pin protrude out of the housing. If both ends protrude out of the housing then both ends of the pin must pass through the corresponding groove side and there would be no abutment like that shown by figure 9b.
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, 5, 9, 10 and 21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by KR20010001439 (KR439).
Regarding claim 1, KR439 discloses a radial foil bearing configured to surround and support a rotation axis, the radial foil bearing comprising: a bearing housing (100); an insertion hole (101) formed in the bearing housing and through which the rotation axis is to be inserted; a groove (102) provided in an inner peripheral surface of the insertion hole; a through hole (103) including an opening formed in the groove and extending to an outer peripheral surface of the bearing housing (runs from the groove to the outer surface of the housing); a restricting pin (120) inserted into the through hole and extending into the groove; and a top foil (110) located in the insertion hole, wherein the groove is formed so as to reach an axial end surface of the bearing housing (the groove 102 includes an opening on an axial end face), wherein the top foil includes a circumferential end part located in the groove (end with 111), and wherein the restricting pin passes through an inner side surface of the groove and includes two ends that both protrude outside the bearing housing (see figure 5).
Regarding claim 3, KR439 discloses that the inner side surface includes: a first groove side surface (left or right vertical sidewall of 102); and a second groove side surface (other one of the left or right vertical sidewall) facing the first groove side
surface, and wherein the restricting pin passes (6) through both the first groove side surface and the second groove side surface (figure 5).
Regarding claim 5, KR439 discloses a second restricting pin that passes through the inner side surface, where in the end part of the top foil is located between the restricting pin and the second restricting pin in an axial direction of the rotation axis (two pins 120 are shown in figure 3 and the material between holes 111 in foil 110 is a part of the top foil that extends between the pins).
Regarding claim 9, KR439 discloses that the two ends of the restricting pin comprise retention portions (bolt head and nut) that restrict displacement of the restricting pin from the bearing housing.
Regarding claim 10, KR439 discloses that the groove (102) extends in an axial direction of the rotation axis (extends parallel to the axis), and wherein the restricting pin and the end part of the top foil overlap when viewed in an extending direction of the groove (the pin passes through a hole in the top foil end, this creates an overlap when viewed in the extending direction).
Regarding claim 21, KR439 discloses a radial foil bearing configured to surround and support a rotation axis, the radial foil bearing comprising: a bearing housing (100) including an insertion hole through which the rotation axis is to be inserted; a top foil (110) located inside an inner peripheral surface of the insertion hole; a groove (102) provided on the inner peripheral surface in which two end parts of the top foil are located (see figure 5); a first restricting pin (120) configured to contact a first end part of the two end parts (extends through both) in the groove to restrict a movement of the top foil in an axial direction of the rotation axis, and a second restriction pin (second pin illustrated in figure 3) configured to contact a second end part of the two end parts in the groove to restrict the movement of the top foil in the axial direction, wherein at least one of the first end part and the second part is located between the first and second restricting pins in the axial direction of the groove (each end has a portion that extends between the two adjacent pins, see figure 3 and the hole pattern for the bolts shown in figure 4a).
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) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR20010001439 (KR439).
Regarding claim 2, KR439 appears to show a configuration where the groove would reach both axial ends of the housing, however KR439 does not clearly illustrate or explicitly state this and thus does not disclose that the groove extends so as to reach both end surfaces in an axial direction of the rotation axis of the bearing housing.
It would have been obvious to one having ordinary skill in the art to modify KR439 and extend the groove to both axial ends of the housing in order to allow the top foil to be inserted from either side of the housing for the purpose of simplifying manufacturing and assembly of the product (doesn’t require precise machining of a particular length/depth of the groove and results in an opening in each side where the top foil can be inserted through either opening).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over KR20010001439 (KR439) in view of Xing, CN 112943789.
KR439 is silent with regards to the relationship between the pin size and the hole in the top foil and thus does not explicitly provide a configuration that allows for relative displacement between the parts.
Xing teaches that the restricting pin (6) passes through a hole (8) provided at the end part of the top foil in the groove, and wherein the top foil is installed in a state that allows for a displacement corresponding to a dimensional difference between the restricting pin and the hole (the translation describes 8 as having a slightly larger size than 6 to allow for movement, see page 4 paragraph beginning “the free end of the inner layer foil 2”).
It would have been obvious to one having ordinary skill in the art at time of effective filing to modify KR439 and provide the holes in the top foil to be oversized to allow for relative movement between the pin and the top foil, as taught by Xing, for the predictable result of allowing for relative movement in the system to compensate of alignment issues or to respond to changing pressures or thermal expansion properties in the device (oversized holes allow for relative expansion and movement to compensate for a number of issues).
Allowable Subject Matter
Claims 11-13 and 15-19 are allowed.
Regarding claim 11, amend to include the allowable subject matter of claim 14, the prior art of record does not disclose a top foil with concave and convex ends that overlap each other while also using restricting pins to retain the overlapping ends in place. The newly applied reference above includes two flat ends that face each other these flat ends are not convex or concave as described in the disclosure of the instant application nor do they actually engage each other as they are spaced apart from one another in the assembled device of the reference as illustrated.
Regarding claim 17, amended to include the allowable subject matter of claim 20, the prior art of record does not teach nor render obvious the claimed combination with the additional feature of the pin including a bent portion that is located outside of the housing.
Response to Arguments
Applicant’s arguments are moot as the amendment to the independent claims over comes the previously applied prior art of record by incorporating the previously indicated allowable subject matter into the independent claims. However, the amendment has caused additional, new, issues above and the submission of the IDS on 3/19/2026 without a timing statement and with the payment of the timing fee has resulted in previously indicated allowable subject matter being reconsidered. The arguments regarding the previous grounds of rejection are moot.
Conclusion
Applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on March 19, 2026 prompted the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 609.04(b). 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.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617
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