DETAILED ACTION
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 Objections
Claims 1, 14 and 16 are objected to because of the following informalities:
Claim 1, line 15, “circumferential direction” should read - - a circumferential direction - -.
Claim 1, line 18, “circumferential direction” should read - - the circumferential direction - -.
Claim 1, line 22, “circumferential direction” should read - - the circumferential direction - -.
Claim 1, line 23, “circumferential direction” should read - - the circumferential direction - -.
Claim 14, lines 2 – 4, “wherein the rolling element bearing has an outer ring and an inner ring, wherein an inner radius of the outer ring is greater than an outer radius of the inner ring” is redundant with respect to claim 1 and should be deleted.
Claim 14, line 4, “optionally” should be deleted.
Claim 16, line 15, “circumferential direction” should read - - a circumferential direction - -.
Claim 16, line 18, “circumferential direction” should read - - the circumferential direction - -.
Claim 16, line 22, “circumferential direction” should read - - the circumferential direction - -.
Claim 16, line 23, “circumferential direction” should read - - the circumferential direction - -.
Appropriate correction is required.
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 – 17 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 term “limited range deviation” in claims 1 and 16 is a relative term which renders the claims indefinite. The term “limited range deviation” is not defined by the claims, 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. Use of the term, renders the limitation “the lower limit of the limited range is smaller than a standard radius by a limited range deviation” indefinite.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites:
the broad recitation “the first limited region covers at least a circumferential region of 120 degrees,” and the claim also recites “for example at least 150 degrees” which is the narrower statement of the range/limitation; and
the broad recitation “the second limited region covers at least a circumferential region of 120 degrees,” and the claim also recites “for example at least 150 degrees” which is the narrower statement of the range/limitation.
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.
The term “marginally” in claim 9 is a relative term which renders the claim indefinite. The term “marginally” 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. Use of the term, renders the limitation “marginally lubricated” indefinite.
Regarding claim 14, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Allowable Subject Matter
Claims 1 – 17 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art of record, including Sugita USPGPUB 20130071056, taken as a whole neither teaches nor makes obvious the claimed combination of a cage as set forth in claim(s) 1 and 16. Sugita teaches a cage or retainer 10 (Fig. 3) comprising: an irregular cage radius defined by an outer cage radius defining an outer circumference of the cage and an inner cage radius defining an inner circumference of the cage; at least first and second limited regions defined by grooves 13; and at least first and second protrusion regions formed between or adjoining grooves 13. Sugita does not disclose or suggest the first and second limited regions covering a circumferential region of at least 90 degrees, as required by claims 1 and 16. Further, Sugita contains no teaching, motivation or suggestion that would lead a person of ordinary skill in the art to modify the cage to incorporate first and second limited regions to cover a circumferential region of at least 90 degrees. Therefore, the claimed combination represents a non-obvious advance over the prior art.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILLIP A JOHNSON whose telephone number is (571)270-5216. The examiner can normally be reached M-F 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, John Olszewski can be reached at 571-272-2706. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHILLIP A JOHNSON/Primary Examiner, Art Unit 3617
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