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 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 1-7 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.
Claim 1 defines two equations in the form of compound inequalities, both these equations define a range for (d1/d2)/2. However the first inequality caps the upper limit of this range at 0.5049 while the second inequality, which defines the same lower limit, caps the range at 0.5056X(-0.002). Either the result of the second inequality must be the same as the first which would make the second inequality redundant or the second inequality is either broadening or narrowing the first defining a smaller or larger upper limit. In other words, if the first condition is satisfied then the second would be satisfied as well since the equations are defining the same thing and thus redundant, or the claim has to be treated as a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim). In this case the claim is indefinite since it does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. In other words, if the inequality bounds are not the same and thus duplicate one must be narrower than the other.
Claim 1 concludes by defining X as being expressed in units of gravitational acceleration, however what these units are is unknown. Gravitational acceleration is measured in m/s2, N/kg or ft/s2, which one of these units are being used in the equation? In this case the units that are used would drastically change the upper limit of the inequality, not defining the units renders the metes and bounds of the claim unclear.
See Remarks below.
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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Toho, WO2022050297 (see US equivalent USP 12,359,693 for line citations).
Regarding claim 1, Toho discloses a tapered roller bearing comprising: an inner ring (2) including a collar part (2b or 2c); an outer member (3) including a rolling surface (3a) having an annular shape, the rolling surface facing a rolling surface (2a) of the inner ring; a plurality of tapered rollers (4) interposed between the inner ring and the outer member; and a retainer (5) configured to retaining the plurality of tapered rollers, the retainer being guided by the inner ring (see column 6, lines 21-38), and including a small-diameter-side annular part (6), a large-diameter-side annular part (7), and pillars (8) connecting the small-diameter-side annular part and the large-diameter-side annular part at more than one circumferential location, at least one of the small-diameter-side annular part or the large-diameter-side annular part including an arcuate bent part (bent corners at 6 and 7) from the pillars and a flanged part (6a or 7a) extending radially inwards from the bent part, the bearing rotating in a revolving motion.
Toho further discloses the same gaps at S1 and S2 as in the instant application, these gaps being defined based on a different in size of the collar diameter (d2 in the instant application) and the flange inner diameter (d1 in the instant application). Toho further discloses that setting these gaps sizes in the bearing, including S1 and S2, are result effective variables that control the degree of tilting of the retainer (see column 7, line 57-column 8, line 19).
Toho does not disclose that the device fits the following inequalities: 0.50018 < (d₁/d₂)/2 < 0.5049 (1), and 0.50018 < (d₁/d₂)/2 <0.5056X(-0.002) (2), where d₁ is an inner diameter of the flanged part, d₂ is an outer diameter of the collar part, and X is a centrifugal acceleration of the bearing which results from the revolving motion of the bearing, and is a valued expressed in units of gravitational acceleration G.
However, in light of the disclosure of Toho the claimed invention of the instant application is defining these same gaps using different terms, as the gaps are already disclosed as being result effective variables in Toho, it would have been obvious to one having ordinary skill in the art at the time of effective filing to make the bearing so that it satisfies the inequalities, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
The claim can also be viewed as defining the same aspect of the invention of Toho using newly developed equations, however developing new equations for a device already disclosed (Toho discloses the same tapered bearing, the same gaps, and controlling the gap size so that the bearing satisfies a different dimensionless equation) is not inventive. In other words Toho appears to be the same device with features of the gaps being defined in a different way, defining something old in a different way is not inventive, see MPEP 2112.
Regarding claim 2, Toho discloses that the retainer comprises a press-formed or turned article (this is a product by process recitation, see MPEP 2113, however Toho discloses that the retainer is pressed, see column 6, lines 39-44).
Regarding claim 3, Toho discloses that the large-diameter-side annular part includes the arcuate bent part (at 7) from the pillars and the flanged part (7a) extending radially inwards from the bent part, and the flanged part forms a bending angle relative to the pillars in the range of 90 ± 10 degrees, as measured by using, as a reference, an angle of the retainer defined by the pillars extending oblique to an axis of the bearing (see column 7, lines 4-21).
Regarding claim 4, Toho discloses that the large-diameter-side annular part includes the arcuate bent part (at 7) from the pillars and the flanged part (7a) extending radially inwards from the bent part, and the bent part adjoining the flanged part has an inner diameter surface with a radius of curvature, which is more than 20% and less than 90% of a length of the large-diameter-side annular part as measured in a direction of extension of the pillars (see column 7, lines 22-33).
Regarding claim 5, Toho discloses that the flanged part (6a or 7a) has an inner periphery which is provided, at more than one location, with oil passages (10 or 11, see column 7, lines 34-43) in the form of cutouts which permit passage of lubricating oil inward and outward of the flanged part in an axial direction of the bearing.
Regarding claim 6, Toho discloses a ratio of a cross section area of the large-diameter-side annular part to a cross section area of the small-diameter-side annular part, as measured in a transverse cross section, is more than 1.0 and less than 1.2 (see column 7, lines 50-56).
Regarding claim 7, Toho discloses that the tapered roller bearing for use in a planetary gear mechanism (intended use of the bearing, this does not structurally limit the bearing), wherein the tapered roller bearing revolves integrally with a planetary gear of the planetary gear mechanism (again this is being treated as intended use for the purpose of applying prior art and thus does not appear to be structurally limiting, however Toho discloses the same use, see column 1, lines 17-21).
Response to Arguments
Applicant's arguments filed August 12, 2026 have been fully considered but they are not persuasive.
With regards to the rejection under 35 USC 112 of claim 1, Applicant argues that the two inequalities are different because the second includes X. However the presence of X is not the issue. The issue is based on the center of each inequality being the same, that being (d1/d2)/2, because of this the inequalities are defining two different ranges for the same relationship of (d1/d2)/2, this is what is causing the issue, not that Applicant has come up with two different ways to define the device. One of the two inequalities is either defining a range boarder or narrower than the other and thus creating a conflict as it wouldn’t be clear what range is controlling OR “0.5056X(-0.002)” is equal to 0.5049 and thus the two inequalities ultimately define the same range and are redundant. Applicant can define the same range or overlapping ranges for the same device in different ways, however the issue is with these being present in the same claim, if these are two different ways to determine or bound the invention and they can include different bounds then these should be in different claims or the broader of the two should appear in the independent claim and the narrower of the two should then further limit in the form of the dependent claim, however in this case it is unclear which of the two inequalities would be further limiting the other. Is there possibly an error in the center part of one of the two inequalities?
Applicant further argues that centrifugal acceleration (X) is a dimensionless number but then states “which is measured in units of gravitational acceleration”, however gravitational acceleration is not unitless and thus X cannot be unitless. Gravitational acceleration is commonly reported in m/s2, however this can also be in cm/s2, ft/s2 or in/s2, each of these would provide a different upper bound for the inequality and thus it is critical to the practice of the invention to know what the units are so that the metes and bounds of the claim can be properly determined. Applicant may be attempting to argue that X is being reported in g-force which is a unitless way to report acceleration however there is no clear support for this in the original disclosure.
For the reasons above the rejection of claim 1 under 35 USC 112(b) is maintained.
With regards to the prior art rejection Applicant disagrees with conclusion that the difference with the prior art is a matter of modifying a result effective variable and states that the office action fails to cite where Toho states this. The rejection states that the support for the result effective variable is found on column 7, line 57-column 8, line 19. Applicant supports the argument by pointing out that Toho is concerned with a gap ratio depending on distinct gaps s1 and s2 and related to a static condition rather than a dynamic condition. First, only one of the two inequalities in the claim is related to a dynamic condition but as explained above the two inequalities are either defining the same thing or there is a metes and bounds issue within the claim, if the same thing is being defined then it’s clear that relationships of gaps can be defined any number of ways and thus the question is not if Applicant’s equation is known but rather is the structure and modification to relative dimensions known. The answer to this is yes as evident by Toho and thus developing a new equation or equations to define already known result effective variables is not inventive. Second, Toho is showing that the gap size is a result effective variable as explained above, how this is reported is acknowledge by the office action to be different and not anticipated by the reference, however the argument is not addressing the ultimate conclusion reached in the rejection above where Toho discloses the same tapered bearing, the same gaps, and controlling the gap size so that the bearing satisfies a different dimensionless equation as not being inventive. If a reference acknowledges that a ratio of gaps is critical to the invention then the size of the gaps individually is also critical, this is what Toho is ultimately showing is not inventive. Specifically, in the citation for showing the feature as a result effective variable Toho states the gaps relate to tilt and this tilt can be suppressed by controlling the gap size in addition to acknowledging centrifugal force as being part of the considerations required. This leads to the conclusion that Toho appears to be the same device with features of the gaps being defined in a different way, defining something old in a different way is not inventive, see MPEP 2112. Applicant has not argued this conclusion but rather presents an argument more directed to Toho not explicitly disclosing the invention which is unpersuasive and ultimately inconsistent with the actual rejection.
Applicant concludes the argument by further stating that the present application seeks to solve a different problem however the problem to be solved does not preclude a reference from disclosing the same structure and indicating that the same features are result effective variables. In this case, Toho discloses the same structure and that gap size is a result effective variable, there may be a different reason for adjusting gap size but that does not preclude Toho from being applicable and rendering obvious the claimed invention.
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
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