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 3-5, 7 and 10 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.
Regarding claim 3, it is unclear how many inner radial grooves are being positively required by the claim. Claim 1 has been amended to set forth the option of an inner radial groove, however claim 3 then positively sets forth “an inner radial groove” but it is unclear if this is the same groove recited in claim 1 or is the combination now covering the possibility of two inner radial grooves? How many inner radial grooves is Applicant attempting to positively recite?
Similarly claim 4 includes the same issue with respect to “an axial groove”, claim 5 with respect to “a corner groove” and claim 7 with respect to “a beveled portion”. It appears that claims 3-5 and 7 might be attempting to limit claim 1 to only one of the possibilities of the claim, however there is already antecedent basis established for the particular grooves and therefore they should be referenced using “the”.
However, claim 4 is further unclear in light of the amendment to claim 1. Claim 1 has been amended to explicitly require the flange, which projects from the axial end face of the main ring body, however, claim 4 now calls for “the axial outer end face of the flange” or “the axial end face” of the main ring body to have the corresponding feature, however when the flange is used as shown it extends the outer end face of the main body and the main body does not include the actual features recited in claim 1. Claim 1 requires the axial end face to be part of the flange and thus any attempt to redefine the location of the end face that is not part of the flange would be broadening of the parent claim and credits combination which it is unclear if Applicant actually had clear support for, if the flange has to project from the end face of the main body of the ring how does the axial end face of the main body further include the features recited?
Claims 5 and 7 also includes a similar issue in the last clause by referencing the “axial end face” in the second clause as being distinct from the flange and is indefinite for the same reason.
Claim 10 further states “a knurling structure” however, similar to above, this feature has been incorporated into claim 1 and thus it is not clear if this is the same structure now in claim 1 or if this is meant to be and additional knurling feature. The claim also references “an axial end face” distinct from the flange end face which is indefinite as explained above in light of the amendment to claim 1.
Part of the issues above is the result of Applicant attempting to keep claim 1 generic to all embodiments of the invention, however the dependent claims are no longer clear as to their actual intent at further limiting or if they are meant to simply exclude an option from the parent claim. It is further noted that because of the repeated use of “or” though out the claims it is possible for multiple grooves and only one of the groove having the knurling structure and regardless of which has the knurling the claim would still be rendered obvious as follows:
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) 1-4, 6, 9-12 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizutani, USP 5,375,933, in view of White, USP 9,581,203, and further in view of Han, CN113389813.
Regarding claim 1, Mizutani discloses an insulated bearing (insulated against electric corrosion) comprising: an outer ring (3); an inner ring (2); and rolling elements (10) arranged between the outer ring and the inner ring; at least one of the outer ring or the inner ring is provided as an insulated ring (covering the ring with 6 or 7 makes the outer ring or inner an “insulated ring” just like applying 6 in the instant applicant forms an insulated ring) having a body (main ring part 2 or 3), the body comprising: a raceway (curved surface contacting ball 10); an axial end face (left or right sides in figure 1); a radial outer circumferential face disposed radially away from the raceway (outer surface 3 or inner surface of 2, these surfaces are radially outward/away from the raceway); and a surface having a material removal portion (the axial ends of each ring, the outer surface of the outer ring 3 and the bore in inner ring 2 all have grooves 4 and 5 which are material removal portions) the material removal portion comprising at least one of an inner radial groove provided on the radially inner circumferential face of the bearing, an axial groove provided on an axial outer end face of the bearing (see figure 1), a corner groove provided at an intersection part between the radial outer circumferential face, or a beveled portion provided at the intersection part between the radial outer circumferential face and end face; the insulated ring having an insulating layer (6 or 7) overmolded on the body and molded into the material removal portion (molded and overmolded are product by process recitations, see MPEP 2113, the only distinguishing structure that might be implied would be a bonding between the materials, however the processes disclosed includes processes that would bond or fix the parts together that resists separation, see column 3, lines 4-16).
Mizutani does not disclose the body comprises: an axial flange projecting axially outward with respect to the axial end face and having a radial inner circumferential face facing the inside of the bearing.
White teaches that in a bearing with an insulating coating/layer that the ring (2) can be provided with an axial flange (narrower projection of 2 that forms axial end faces 46 and 48, this is the same type of flange as 5 in the instant application) projecting axially outward with respect to the axial end face (end face portion radially inside of 42 just like 3 in the instant application) and having a radially inner circumferential face facing the inside of the bearing (at 42/44)
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Mizutani and use any previous known ring geometry with a corresponding coating, like that taught by White that includes the axial flange, since substituting between different known configurations of the inner ring with the corresponding coating provides the same predictable result of attaching the two distinct materials together in a manner that forms a singular unit.
Mizutani also does not disclose that the axial groove comprises a knurling structure is provided in the groove and the insulating layer is embedded in the notches of the knurling structure.
Han teaches that a structure used to secure an element (not illustrated in the figures) to the outer ring of a bearing the groove (at 230) is provided with a knurling (230) for the purpose of more firmly securing the parts together (see translation page 4).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Mizutani and add knurling to the grooves, as taught by Han, for the purpose of more firmly securing the parts together. NOTE: Han is related to a high speed belt pulley, the “injection” referenced in the translation is the pulley body, the knurling is provided to better secure the pulley body, or coating member for the outer ring, with the outer ring.
Regarding claim 2, Mizutani discloses that the surface of the body comprises a groove (4 or 5) as said material removal portion, and the insulating layer is overmolded on the body and embedded in the groove (the layers 6 and 7 include projections 8 and 9 that are embedded in the grooves).
Regarding claim 3, Mizutani in view of White discloses that there is a groove on the radial inner surface formed by the axial flange (flange structure taught by White includes the narrowed portion that comprising an inner radial groove (42/44) and wherein the insulating layer covers the outer circumferential face, the axial flange and is embedded in the groove (see figure 1).
Regarding claim 4, Mizutani in view of White discloses that the material removal portion comprises an axial groove as said groove provided on the axial outer end face of the flange and the insulation layer is embedded in said axial groove (in the combination Mizutani is being provided with an axial flange, this flange forms an radial inner groove as shown in White, however the combination is not removing the groove in the axial end face of the ring in Mizutani and thus the combination covers the limitations set forth by the claim).
Regarding claim 6, Mizutani further discloses that the radial outer circumferential face further comprises an outer radial groove as said groove (grooves 5 on the outer surface of the outer ring or grooves 4 in the bore of the inner ring), and the insulating layer (6 or 7) is embedded in said outer radial groove.
Regarding claim 9, Mizutani and White both disclose that the grooves, specifically the inner radial groove taught by White, is provided as one continuous groove.
Regarding claim 10, Mizutani in view of White and Han discloses that at least one of the radial outer circumferential face, an axial outer end face of the axial flange and the axial end face comprises a knurling structure, and the insulating layer is further embedded in the notches of the knurling structure (Han is teaching providing a groove with knurling, this would be placed in the grooves of Mizutani of which includes a groove on the axial end face).
Regarding claim 11, Mizutani discloses that the material of the insulating layer comprises one of: polyetheretherketone, polyphenylene sulfide [PPS], or polyimide (see column 2, lines 64-65 disclosing PPS).
Regarding claim 12, Mizutani discloses the insulating layer includes reinforcing fibers added to the material of the insulating layer to enhance the strength of the insulating layer (see column 2, lines 64-66 disclosing the use of glass fibers, the introduction of fibers to a base resin material is to improve some form of a strength property).
Regarding claim 20, Mizutani discloses that the outer radial groove (grooves on the outer radial surface of the outer ring) is arranged offset along the axial direction relative to the raceway symmetry plane (the raceway symmetry plane is the center of the bearing, both grooves on the outer surface of Mizutani are offset away from the center of the bearing in the axial direction).
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizutani, USP 5,375,933, in view of White, USP 9,581,203, and further in view of Han, CN113389813, as applied to claim 2 above, and further in view of Arnault, US PGPub 2023/0220882.
Mizutani in view of White and Han, while disclosing a device with similar grooves (like in Mizutani and White) does not disclose that the assembly “further comprises” a corner groove at an intersection between the axial end face and the outer circumference of the outer ring.
Arnault teaches that a bearing body that comprises a corner groove as said groove provided at an intersection part between the radial outer circumferential face and the axial flange, and the insulating layer is embedded in the corner groove; or the body further comprises a corner groove as said groove provided at the intersection part between the radial outer circumferential face and the axial end face, and the insulating layer is embedded in the corner groove (28/30 are at the intersection of the outer circumferential face 14a and the axial ends 14c and 14d).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Mizutani in view of White and Han and add a corner groove, like that taught by Arnault, for the predictable result if increasing the overall surface area between the insulating layer and the ring element and thus increasing the holding force between the parts (the more surface area that is in contact the greater a friction or holding force between the parts will be present).
Claim(s) 7 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizutani, USP 5,375,933, in view of White, USP 9,581,203, and Han, CN113389813, as applied to claim 1 above, and further in view of Arnault, US PGPub 2023/0223813 (Arnault813).
Regarding claim 7, Mizutani in view of White and Han, does not disclose that the assembly includes a bevel as a material removal portion at an intersection between the axial end face and the outer circumference of the outer ring.
Arnault813 teaches a bearing body that comprises an axial flange projecting axially outward with respect to said axial end face and having a beveled portion as said material removal portion at the intersection part between said radial outer circumferential face and said axial flange; or the body further comprises a beveled portion as the material removal portion provided at the intersection part between the radial outer circumferential face and the axial end face (the bevel illustrated in figure 1 is between 14a and 14c/14d).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Mizutani in view of White and Han and add a bevel portion, like that taught by Arnault813, for the predictable result if increasing the overall surface area between the insulating layer and the ring element and thus increasing the holding force between the parts (the more surface area that is in contact the greater a friction or holding force between the parts will be present).
Regarding claim 13, Mizutani, in view of White and Han, as applied to claim 1 above, does not disclose the addition of an outer metal ring connected to and covering at least a radial outer face of the insulating layer.
Arnault813 further teaches that an insulated bearing can further comprise an outer metal ring (24, see paragraph 0032) connected to and covering at least a radial outer face (26a) of said insulating layer for the purpose of providing an outer layer that is easily machined to a specified tolerance as needed (paragraph 0032, in other words a metal surface is easier to machine to a specific size compared to the elastic material that forms the insulating layer).
It would have been obvious to one having skill in the art at the time of effective filing to modify Mizutani in view of White and Han and include an outer metal ring connected to and covering at least a radially outer surface of the insulating layer, as taught by Arnault813, for the purpose of providing an outer layer that is easily machined to a specified tolerance as needed.
Regarding claim 14, Mizutani in view of White, Han and Arnault813 discloses that the inner surface of the outer metal ring comprises a knurling structure (the series of projections 30 and 32 in the outer 24 in the embodiment shown in figures 2 and 3 can be considered a “knurling structure” in Arnaulte813), and the insulating layer is further embedded in the notches of the knurling structure of the outer metal ring (the material of the layer 26 extends between and surrounds the knurling structure and is thus embedded in the notches or spaces between adjacent projections).
Regarding claim 15, Mizutani in view of White, Han and Arnault813 discloses that the outer metal ring comprises a flange extending radially from its outer circumference, and the flange is embedded in a corner groove of the insulating layer (see the embodiment of figure 5 of Arnault813 which includes flanges 44 and 46 that are in a groove of the insulating layer 26).
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mizutani, USP 5,375,933, in view of White, USP 9,581,203, and Han, CN113389813, as applied to claim 1 above, and further in view of Yabe, USP 5,961,222.
Regarding claim 16, Mizutani does not disclose a particular thickness for the insulating layer and therefore does not disclose a thickness equal to or greater than 0.45mm.
Yabe teaches a thickness of an insulating layer is set equal to or greater than 0.45mm (at least column 6, lines 15-16).
It would have been obvious to one skilled in the art at the time of effective filing to modify Mizutani and make the thickness equal to or greater than 0.45mm, as taught by Yabe, since adjusting the thickness of an insulating layer contributes to the degree of insulating achieved and selecting a value within a range already disclosed in the prior art of record is not inventive but rather a matter of selecting a particular size. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955). Furthermore as the general conditions are disclosed in Mizutani, discovering an optimum or workable range for the thickness of the layer involves only routine skill in the art. In re Aller, 105 USPQ 233.
Response to Arguments
Applicant's arguments filed September 8, 2026 have been fully considered but they are not persuasive.
With regards to the arguments against the rejections under 35 USC 112, these arguments are moot as the amendment resolved these issues, however the amendment has generated new issues and rejections under 35 USC 112, these are what appear above.
The arguments against Mizutani as applied under 35 USC 102 are also moot as the amendment has necessitated the removal of this grounds of rejection and has been replaced by a rejection under 35 USC 103. The other arguments against the previous alternative rejections under 35 USC 102 are also moot as these rejections are withdrawn.
The current amendment incorporates previous claim 8 into the independent claim, this corresponds to the previous rejection of Mizutani in view of White and Han, the argument against this rejection begins on page 14 of the remarks.
With regards to this combination Applicant first argues that the mapping of the features taught by White is actually a stepped profile that “does not ‘project axially outward with respect to the axial end face’”. Applicant has defined the axial end as the end of the body at 3, the projection or flange then extends from this surface, Applicant states that White is just a reduced diameter section, however the same interpretation can be applied to Applicant’s illustrations. The shape of White is generally identical to the shape shown in the instant application and thus the argument is not persuasive and to illustrate how the shapes are generally identical a side by side comparison appears below.
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Applicant goes on to argue that the grooves are not material removal portions for retaining an overmolded part in White, however it is clear in the reference and specifically the figure above that the overmolded layer extends into the groove and thus this argument is unpersuasive. Applicant is making the case that the groove holds a seal, however there is no preclusion against the groove preforming other functions in the claim and the radially inner groove being argued is listed as an alternative in the claim, the same shape of White can be used in combination with Mizutani but the end face groove and/or the outer circumferential grooves can be the grooves used for retaining the overmold. Applicant also points out that in White the overmold is ceramic, however White is not relied upon for the material but rather the overall shape of the outer ring itself, the fact that a different material is used does not preclude one of ordinary skill in the art from using the shape of White in place of another known shape.
With regards to Han, Applicant correctly acknowledge how Han is being applied in the rejection, however Applicant argues that the groove and knurled surface is on the outer wall of the outer ring, this is correct, however the location is not being taught by Han but rather the combination of providing a groove with a knurled feature is what is being taught, this can be applied to the axial end face of Mizutani or the inner groove that would be present as a result of the combination with White. Applicant further states that 230 and 240 are arranged in parallel, however 240 is never referenced by the rejection these are two distinct features of Han, the groove with the knurling at 230 is the only feature being referenced in Han in the combination and thus the argument pointing to a different part of Han is not consistent with the rejection and is unpersuasive. What is shown at 230 in Han is a form of a groove with a knurled bottom, this is the same general concept that Applicant is using in the claimed invention and thus Han is demonstrating that the feature Applicant is arguing is not new, novel or inventive. Applicant also points out that Han does not include the flange, however Han is not relied upon for this feature, this is a feature of White as addressed above. Applicant also argues that Han is not related to an insulating layer but rather a pulley, however Han is not relied upon for what is secured to the outer ring, Han is only relied upon for teaching a known securement structure that includes a groove with a knurled feature, this concept of an improved connection applies to all features secured to an outer ring of a bearing and can be applied to a coating or insulating layer, like in the combination, or any other member, the concept is clearly demonstrated by the prior art as not being new, novel or inventive.
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.
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/JAMES PILKINGTON/Primary Examiner, Art Unit 3617
