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 6-13 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 terms “low-viscosity” in claim 6 is a relative term which renders the claim indefinite. The term 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. What viscosities are considered low? Is this the same as the 40-80 recited earlier into the claim? If so, this recitation of the claim is related to the base oil of the grease not the grease as a whole that Applicant is referencing as low viscosity. It is further noted that the claim uses the additional relative term “low-speed” however the specification defines this as speeds up to 200 rpm in paragraph 0027.
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) 6-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kubota, JP2008-51165, in view of Kawai, JP2018-165552, and further in view of Isa, US PGPub 20220017836.
Regarding claim 1, Kubota discloses a bearing device for a vehicle wheel comprising: an outer member (14) having a double row of outer raceway surfaces on an inner circumference (14a, 14b); an inner member (13/18) having a double row of inner raceway surfaces facing the double row of the outer raceway surfaces on an outer circumference (17a,18a); and a plurality of tapered rollers (15,16) accommodated so as to freely roll between the outer raceway surfaces and the inner raceway surfaces, wherein the inner raceway surfaces are integrally formed with flange sections (17b,18b) that come into sliding contact with large-diameter-side end surfaces of the tapered rollers (left side of roller 15, right side of roller 16).
Kubota does not disclose that the flange sections have an arithmetic mean roughness Ra of 0.08 µm or less.
Kawai teaches that a tapered roller bearing can include flange sections (18) that have an Ra of 0.08 µm or less (18 is disclosed as the ridge, the surface of this ridge is stated as having an Ra of 0.063 µm or less, see the bottom of page 16 of the attached translation) for the purpose of ensuring that a sufficient oil film can form between the end of the roller and the flange surface (bottom of page 18 of the attached translation).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Kubota and provide the flange sections with an arithmetic mean roughness Ra of 0.08 µm or less, as taught by Kawai, for the purpose of ensuring that a sufficient oil film can form between the end of the roller and the flange surface.
Kubota also does not disclose a base oil of grease to be filled in a space surrounding the tapered rollers has a kinematic viscosity at 40°C of 40 to 80 mm²/s.
Isa teaches a grease composition specifically made for tapered rollers bearings which includes a base oil with a kinematic viscosity at 40°C of 40 to 80 mm²/s (see at least paragraphs 0052 and 0053) for the purpose of providing a grease that exhibits excellent wear resistance, peel resistance, torque reduction and low-temperature performance in a tapered roller bearing (paragraph 0033).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Kubota and use any previously known grease composition, including one specifically made for tapered roller bearings that includes a base oil with a kinematic viscosity at 40°C of 40 to 80 mm²/s, as taught by Isa, for the purpose of providing a grease that exhibits excellent wear resistance, peel resistance, torque reduction and low-temperature performance in a tapered roller bearing (paragraph 0033).
Using the same combination of surface roughness and grease base oil result in a device that will perform in a manner “such that an oil film is formed at the flange sections even when the grease is a low-viscosity oil so as to reduce torque in a low-speed rotational region”. This additional recitation in the claim is not structurally limiting but is rather defining the benefit or result of using the structural features recited earlier in the claim, a device with the same structural features would provide the same benefit/result. If Applicant intends for this recitation to have some further structurally limiting requirement the requirement should be explicitly recited by the claim.
Regarding claim 7, Kubota in view of Kawai and Isa discloses that the base oil of the grease is a synthetic hydrocarbon oil (see Isa paragraph 0054).
Regarding claim 8, Kubota in view of Kawai and Isa discloses that a thickener of the grease is an alicyclic aliphatic diurea (see Isa paragraph 0067).
Regarding claim 9, Kubota in view of Kawai and Isa discloses that the consistency of the grease is 200 to 300 (see Isa paragraph 0070).
Regarding claims 10-13, Kubota discloses that the inner member (17/18) includes a hub ring (17) which has, at an inner axial end (right side), a step portion (at 5b) which is reduced in diameter relative to an adjacent portion of the hub ring, and an inner ring (18) which is press-fitted onto the step portion of the hub ring, and one of the inner raceway surfaces (17a) is formed on an outer circumference of the hub ring.
Response to Arguments
Applicant's arguments filed June 9, 2026 have been fully considered but they are not persuasive.
Applicant argues that the claimed combination of surface roughness and base oil kinematic viscosity has “technical significance” and points to paragraph 0028.
Applicant appears to be making the case that there is some form of unexpected result from using the previously known surface roughness value and viscosity value however this is not supported by the evidence of record. Paragraph 0028 only appears to be defining the benefit of the invention, this benefit is not described as being unexpected and a benefit to an invention does not control patentability. Ultimately Applicant is arguing that the benefit of the invention is different from the prior art of record, however patentability is determined based on the structure of the invention as claimed, the function/benefit of the device does not define the device structurally over the prior art of record, see MPEP 2114. Applicant’s argument could further be considered as stating that by combining common bearing features they have discovered a new benefit, however something old or combinations of previously known features, absent any showing of unexpected results, is ultimately a discovery of a new property which is also not patentable, see MPEP 2112, specifically section III.
As there is no structural difference recited by the claim and there is no evidence of unexpected results the argument is unpersuasive and the rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 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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