Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Rejections under 35 USC 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 and 4-9 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claims 1 and 8-9 recite a bearing element comprising the metal flow structure illustrated in figs. 29-30. Applicant’s disclosure does not describe claims 1 or 8-9 in a way that would allow one skilled in the art to practice the claimed invention. As further discussed below, the MPEP lays out eight factors to consider whether the level of experimentation would be undue. MPEP 2164.01(a).
(A) The breadth of the claims. The first analytical step requires that the examiner determine exactly what subject matter is encompassed by the claims. In the instant application, claim 1 requires a bearing element having the metal flow pattern illustrated in figs. 29-30.
(B) The nature of the invention i.e., the subject matter to which the claimed invention pertains. The instant application pertains to a bearing ring and manufacture thereof to produce the claimed metal flow.
(C) The state of the prior art. The current state of the prior art discloses many bearing element structures, and many ways to manufacture a bearing element.
(D) The level of one of ordinary skill. Applicant’s disclosure must be sufficient to enable a bearing manufacturer having three-to-five years of experience to use the invention.
(E) The level of predictability in the art. The predictability or lack thereof in the art refers to the ability of one skilled in the art to extrapolate the disclosed or known results to the claimed invention. The instant invention is within the mechanical arts. The mechanical arts are typically considered predictable (as compared to pharmaceutical arts). However, this predictability does not cure the lack of direction provided by the inventor, or lack of working examples, that would allow one of ordinary skill to understand how to create a bearing element with the claimed metal flow.
(F) The amount of direction provided by the inventor. The amount of guidance or direction refers to that information in the application, as originally filed, that teaches exactly how to make or use the invention. Upon reviewing the instant application, the originally filed disclosure teaches manufacturing methods for making a bearing ring. However, Applicant’s specification teaches these methods producing a bearing ring with a different metal flow than the metal flow of claims 1 and 8-9.
Applicant’s detailed description begins with a three-step method that includes reference numbers that reference elements from every example method (see paras [0061]-[0068] of Applicant’s pre-grant publication). This three-step method describes the step illustrated in figure 6 of the first example method (i.e. providing first piece 13 and obtaining second piece 16 by processing the first member with the tooling illustrated in figure 6, and then separating the inner and outer rings from the second member 16). A number of paragraphs after this three-step method, paragraph [0072] of Applicant’s pre-grant publication states: “In an embodiment, a bearing element has traces produced according to the bearing element manufacturing method. In an example, the trace is a metal flow (metal fiber flow, fibrous metal structure) observed in the cross-section of the bearing element. FIGS. 29 and 30 show an example of the metal flow in the axial cross-section of the bearing element.” The detailed description then describes the structure of figs. 29 and 30. The detailed description then describes the example embodiments.
In the first example embodiment (the one described in the most detail, i.e. figs. 4-11), the specification states a bearing ring is created having the metal flow pattern illustrated in figure 2 (see para. [0161] of Applicant’s pre-grant publication). Applicant’s specification teaches this pattern being formed due to the metal flow pattern produced after the third step, which is illustrated in figure 11B (see paras. [0162]-[0164] of Applicant’s pre-grant publication). The other example methods all have at least the same first three steps of the first example method—thus will all presumptively have the metal flow pattern illustrated in figure 11B. In addition, since none of the other example methods seem to perform any extra steps on the outer ring portion of the workpiece that would change the metal flow pattern from the pattern illustrated in figure 11B to the flow pattern illustrated in figure 29, the other example methods seem to also produce the flow pattern illustrated in figure 2.
Thus, it appears that none of the example methods provide the metal flow pattern illustrated in figure 29. There is also no further explanation as to how the metal flow pattern of figure 29 is formed. For example, how is the first piece 13 made so as to have a metal flow pattern different from that of figure 11B, and which can form the final flow pattern illustrated in figure 29. As stated above, the method of paras. [0061]-[0068] recite the fourth step of the first example method (which includes processing the piece 13 into piece 16).
(G) The existence of working examples. As described in factor (F), above, Applicant’s originally filed application gives specific manufacturing methods, however Applicant’s state that their methods produce a different metal flow in the bearing ring.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure. Since one of ordinary skill in the art would be uncertain as to how to change current manufacturing techniques (or the manufacturing methods in the instant application) to make the claimed bearing ring, it would not be practical for one of ordinary skill in the art to be able to make the bearing ring as recited in claim 1 after reasonable experimentation.
After considering all of the above factors, claims 1 and 8-9 are not enabled by the originally filed disclosure. Due to the example methods forming a metal flow different than that of the claim one of skill in the art could not form the claimed bearing ring without undue experimentation.
Claims 4-7 are rejected for depending from claim 1.
Claim 1 and 4-9 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
While original claims are generally viewed as part of the written description, “issues of adequate written description may arise even for original claims, for example, when an aspect of the claimed invention has not been described with sufficient particularity such that one skilled in the art would recognize that the applicant had possession of the claimed invention at the time of filing.” See MPEP 2163(1)(A). In addition, “The specification must still be examined to assess whether an originally-filed claim has adequate support in the written disclosure and/or the drawings.” See MPEP 2163(I). The claimed invention as a whole may not be adequately described if the claims require an essential or critical feature which is not adequately described in the specification and which is not conventional or known in the art. An original claim may lack written description support when the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify the structure to the perform the function or achieve the result.
In this case, Applicant contends that the method of figure 4 produces the metal flow of figures 29-30, and as recited in independent claims 1 and 8-9. However, as detailed in the enablement rejection above, Applicant’s originally filed specification explicitly teaches the method of figure 4 forming the metal flow of figure 2. Thus, assuming the method of figure 4 can also produce the metal flow of figures 29-30, there is an essential or critical feature of the invention missing to allow the metal flow to form figures 29-30 instead of figure 2. Stated another way, it is clear to one of skill in the art that different features/structures are needed to form the different metal flows illustrated in figures 2 and 30. Since Applicant’s originally filed disclosure teaches the method of figures 4-11 forming the metal flow of figure 2, and Applicant argues in their reply that the method of figure 4 also forms the metal flow of figure 30, the different features/structures to form the metal flow of figure 30 are absent from the disclosure.
Claims 4-7 are rejected for depending from claim 1.
The following is a quotation of 35 U.S.C. 112:
(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 9 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 applicant regards as the invention.
Claim 9 recites the line element is continuous in at least three patterns of the first pattern, the second pattern, the third pattern, the fourth pattern, and the fifth pattern. There is insufficient antecedent basis for the line element, since a plurality of line elements were previously introduced. It is further unclear what this limitation is attempting to add to the claim since the claims previously require the line elements being continuous in all of the first to fifth patterns. For purposes of examination, this limitation will be interpreted as line elements extending continuously over an area that includes at least three of the patterns
Rejections under 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Assuming arguendo that the above 112(a) enablement rejection is improper and the methods described in Applicant’s disclosure form the bearing ring having the claimed metal flow, the below prior art rejection is made.
Claims 1 and 4-9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by USPGPub No. 2018/0257131 (“Mori”).
Regarding claims 1 and 8-9, Mori discloses a bearing element (element 2 of fig. 10) comprising: a body which has a ring shape (fig. 10), wherein the body includes a first axial surface, a second axial surface, an inner peripheral surface, an outer peripheral surface (fig. 10), a first chamfered portion, a second chamfered portion, a third chamfered portion, and a fourth chamfered portion (fig. 10, para. [0003], i.e. portions 75 on the four corners of the bearing element), the first axial surface being one axial end surface of the body, the second axial surface being another axial end surface of the body (fig. 10), the first chamfered portion being formed between the outer peripheral surface and the first axial surface and, the second chamfered portion being formed between the outer peripheral surface and the second axial surface (fig. 10), the third chamfered portion being formed between the inner peripheral surface and the first axial surface, the fourth chamfered portion being formed between the inner peripheral surface and the second axial surface (fig. 10), wherein an axial cross-section of the body has a shape corresponding to an outer race of the bearing element, the shape being located on a first part of the inner peripheral surface of the body, the first part intersecting with a line passing through an axial center of the body and along a radial direction, a length in the axial direction and between the first axial surface and the line being greater than a length along the line and between the first part of the inner peripheral surface and the outer peripheral surface (fig. 10). The examiner notes that the manufacturing process disclosed in Mori is used to make the ring 2 of figure 10 (see paras. [0083], [0103] & [0122]).
The rest of claims 1 and 8-9 are directed to the pattern of the metal flow of the ring. Mori fails to explicitly teach the metal flow. However, MPEP 2112.01 states that where the claimed and prior art products are produced by identical or substantially identical processes, claimed properties are presumed inherent. In this case, the claimed bearing elements are substantially identical in shape (see the outer ring of Applicant’s figure 1 and the outer ring 2 of Mori figure 10).
With respect to the manufacturing process, the work/deformation done to the outer ring in the method of Mori is substantially identical to the work/deformation done to the ring in Applicant’s invention. Applicant’s invention teaches starting with a billet of material, crushing the material in the axial direction to form a flatter member, forming the inner and outer rings with a series of process steps where the outer ring portion is clamped during the process to obtain a ring with a precise axial length, the first and second chamfered portions are pressed into the outer ring, the outer ring portion is separated from the rest of the workpiece, and the outer ring is subjected to grinding and cutting. Mori teaches all of these steps. Mori teaches beginning with a billet 8 (fig. 1A), crushing the billet in the axial direction to form a flatter member (fig. 1B), forming inner and outer ring portions with the crushed billet (figs. 2A-2B), clamping the outer ring portion to form an outer ring portion with a precise axial length (fig. 8), the first and second chamfers are pressed into the outer ring portion (figs. 7 & 8, paras. [0104] & [0108], i.e. via surfaces 31b & 70), separating the outer ring member from the rest of the workpiece (see figures 7 & 9), and grinding and cutting the separated outer ring portion (para. [0122]).
Since the bearing outer rings of Applicant’s invention and Mori are substantially identical in shape and processed in substantially identical ways, one of skill in the art would presume that the claimed flow pattern is inherent in the outer ring of Mori.
Claim 4 recites further limitations regarding the metal flow. These features are presumed inherent for the same reasons detailed in the rejection to claim 1 above.
Regarding claim 5, Mori further teaches a bearing comprising: the bearing element according to claim 1 (fig. 10, paras. [0001]-[0002] & [0128]).
Regarding claim 6, Mori further teaches A machine comprising: the bearing according to claim 5 (paras. [0001] & [0130], i.e. a vehicle).
Regarding claim 7, Mori further teaches A vehicle comprising: the bearing according to claim 5 (paras. [0001] & [0130]).
Response to Arguments
Applicant's arguments filed February 25, 2026 (“the remarks”) have been fully considered. Each of applicant’s remarks is set forth, followed by examiner’s response.
On pages 9-10 of the remarks, Applicant argues that the claims are enabled because the description in ¶ [0161] of the publication is merely exemplary “and does not limit the resulting metal flow of the entire claimed manufacturing method.”
Nothing about the description makes it seem like the metal flow of figure 2 is exemplary. Applicant’s specification details the manufacturing process of figures 4-11, and states that it produces the flow pattern as illustrated in figure 2. Applicant’s disclosure and arguments provide no analysis of how the method of figures 4-11 can also produce the flow pattern of figures 29-30. Obviously, something has to be different to get the different flow patterns (since performing the exact same method on the exact same starting material will lead to identical or substantially identical final products). Applicant’s originally filed disclosure provides no guidance as to what is different to obtain the different flow pattern illustrated in figures 29-30. And applicant’s arguments up to this point have also not stated what is done differently to obtain the different flow patterns.
On page 10 of the remarks, Applicant appears to conclusively assert that because the specification includes figures 29 and 30, that the flow pattern of figures 29 and 30 is supported and enabled. Just because a flow pattern is illustrated in figures 29 and 30 does not mean that the underlying method to achieve the flow pattern is supported or enabled. If that were the case why would any Applicant disclose a method of forming a certain flow pattern instead of keeping it as a trade secret?
On pages 10-14 of the remarks, Applicant argues that the 102 rejection is improper because (i) one of skill in the art could not believe the metal flow is inherent if they do not believe the metal flow is enabled, (ii) Mori does not teach steps substantially similar to any of the steps in ¶ [0065]-[0112], for example no step equivalent to that of figure 10.
With respect to (i), this argument has been addressed previously in the Office action mailed on November 25, 2025. Those rebuttals are incorporated herein. Briefly, the rejection asserts that the metal flow of Mori would be substantially identical to that of the instant invention. While there is no support for Applicant’s method forming the metal flow of figures 29 and 30, if that is indeed the metal flow that is formed, then the rejection asserts that the method of Mori would form said metal flow.
With respect to (ii), the examiner notes that ¶ [0065]-[0112] of Applicant’s originally filed specification is the entire first method of figures 4-11. Generally asserting that the manufacturing processes are different without specifying a specific step of the instant application that is different, and more importantly why this step would lead to a different flow pattern, is not persuasive. As detailed in the Office action, the rejection discusses and compares the methods of each of the Mori and the instant invention. Since there is no substantive explanation in the remarks of why a certain step of Applicant’s invention would lead to a different flow pattern, the examiner is not persuaded that the flow pattern of Mori would be different than that of the instant invention. The examiner also notes that the rejection does not state that the methods are identical. Thus, generally claiming that the methods are not identical is not a persuasive rebuttal.
With respect to figure 10 that Applicant points to, this step is equivalent to the step illustrated in figure 9B of Mori. Both figure 9b of Mori and figure 10 of Applicant’s figures teach a step of removing a radially inward protrusion from the ring in the same way (i.e. positioning the ring in a die and removing the radially inward protrusion with punch). Applicant argues on page 14 of the remarks that figures 9b and 10 are not the same because Mori teaches different dimensioned features. This is a very minor structural difference. Nowhere in Applicant’s originally filed specification does it suggest that the method only works with rings having a feature with a specific dimension. In addition, it is unclear what feature or features Applicant is referring to that is different in such a way that it would lead to a materially different metal flow.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://portal.uspto.gov/external/portal. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.