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 § 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.
Claims 1, 3, 10-12, 16-18, 20, 30 and 34 are rejected under 35 U.S.C. 102(a1) as being anticipated by Pope, USP 6,655,845.
Regarding claim 1, Pope discloses a bearing assembly, comprising a roller bearing unit (based on the disclosure this is referencing a rolling element, this corresponds to 2 in figure 2a-2 or all the different roller shapes shown in the other figures, such as figures 1a-1f); an inner race (3); and an outer rice (1), wherein the roller bearing unit is formed of a polycrystalline super-hard material (col. 9, lines 1-7 and col.10, lines 19-29) having a mean mass density of at most 4.5 g/cm3 (see col. 42, lines 43-46 which discloses a density of 2.6 g/cm3 which is within the claimed range) and a volume-weight arithmetic mean thermal conductivity of at least 100 W/m K (see table 1 which lists all the different usable materials with the first two having thermal conductivity higher than 100 W/m K which anticipates the range claimed).
Regarding claim 3, Pope discloses that the super hard material is polycrystalline diamond (PCD) (see col. 11, lines 42-45, or first material in table 1). The claims lists alternate materials as well, while not appearing by the same name it is believed that materials 2 and 3 of table 1 in Pope matches these materials.
Regarding claim 10, Pope discloses that the roller bearing unit is substantially free of a cemented carbide substrate (the substrate 410 can include a pure metal, see col.13, lines 25-29).
Regarding claim 11, Pope discloses that the roller bearing unit consist essentially of a mass of polycrystalline super hard material (see fig 2F-2 and see col.10, line 19-29 disclosing that the roller can be solid polycrystalline material).
Regarding claim 12, Pope discloses that the super-hard material comprises a plurality of directly inter-bonded diamond grains (see col. 14, lines 1-9, “bonded crystals” and figs 4A-4C) having a size distribution characteristic with a mean equivalent circle diameter that is at most 10 microns, as viewed on a section through the super-hard material (see col. 38, line 65-col. 39, lines 1-5).
Regarding claims 16 and 20, Pope discloses one or both of the races comprises super-hard material, specifically PCD (see col. 9, lines 1-19).
Regarding claim 17, Pope discloses that the assembly comprises a plurality of roller bearing units (the rolling elements 2 or the rollers of any other embodiment) configured such that the roller bearing units are constrained to roll between the inner and outer races (1 and 3) in use, when the inner race and the outer race rotate coaxially relative to each other.
Regarding claim 18, Pope discloses that races can further include the polycrystalline super-hard material (see figure 1 for example showing the same hatching for all parts, this indicates that the material is/can be the same) and as noted in the rejection of claim 1 above Pope discloses that a density is at most 4.5 g/cm3 and a thermal conductivity of at least 100 W/m K (see Table 1).
Regarding claim 30, Pope discloses a method of making a roller bearing unit that includes the steps of providing the material and then processing the material to the final shape. The steps of claim 30 are not specific but rather generic recitations of providing a material and making the bearing element, this is how all bearing elements are made, a material must first be provided and then the material is processed into the desired shape and dimensions. By showing that a rolling element with the same material as disclosed and claimed by Applicant was known prior to the invention by Applicant that material must have been provided and then processed into a rolling element and thus the claim is anticipated by Pope.
Regarding claim 34, Pope discloses that the method includes processing the precursor body, processing it to define the dimensions of the part being made and processing it to remove any residual material. First the claim is not defining any particular steps but rather is defining that the stock material is processed to the final shape with any excess material being removed. This is done in all machining processes, a blank is provide (this can be an oversized roller), the blank is cut or machined to define the final shape and size of the part being made and either after or during cutting the part being made is removed from the excess material. Applicant appears to be attempting to claim the steps as illustrated in figure 15 but the claim does not explicitly recite any steps, only what is occurring which can be done using any number of steps. However it is further noted what appears to be illustrated in figure 15 is steps common to CNC or lathe forming of a part where an oversized blank is placed in a holder, machined or tailored to shape leaving a small amount of material holding the part to the remainder of the blank and then cutting the part from the remainder of the blank. Even if these steps are positively recited or later found to be required by the claim the claim would still be rendered obvious as it is only attempting to reference a common method of making parts.
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 2 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Pope, USP 6,655,845, in view of Shabalala, WO 2012/152874.
Pope, while disclosing the same general material for both the rolling elements and the races to that claimed, does not disclose that the polycrystalline material specifically comprises interstitial volumes between super-hard grains, the interstitial volumes including non-super-hard material or voids (in other words Pope does not explicitly address the composition of the material between the grains/crystals other than stating that a solvent can be present).
Shabalala discloses a PCD super hard material that includes diamond grains with an interstitial volume content can include other materials or can remain empty (voids) (see page 5, lines 15-28).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify the device of Pope to include the interstitial volumes between super-hard grains with other material or to remain as voids, as taught by Shabalala, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. In re Leshin, 125 USPQ 416.
Claims 4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Pope, USP 6,655,845.
Regarding claim 4, Pope discloses the claimed invention including that the roller bearing unit is spherical (fig. 1A), cylindrical (fig. 1B) and tapered (fig. 1D) but fails to disclose the diameter measured on a plane perpendicular to an axis of rotation in use varies by at most 3 micron.
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the roller bearing unit of Pope so that the diameter varies at most by 3 microns, since it has been held that where the general conditions of a claim is disclosed in the prior art, discovering the optimum ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. As understood, the smaller the diameter change is the smoother the rotation and the wearing on the surfaces will be minimized, what the claim is ultimately defining is a tolerance on the rolling element, tolerances do not change the structure of the invention.
Regarding claims 6-8, Pope fails to disclose that the roller bearing unit has a volume-weighted arithmetic mean electrical resistivity of at least 10-2 Ω throughout the volume of the roller bearing unit (clm 6), a tensile strength of at least 1,000 MPa (clm 7) and a Young’s modulus of at least 450 GPa (clm 8).
It would have been obvious to one of ordinary skill in the at the time the invention was filed to modify the device of Pope to include the electrical resistivity is at least 10-2 Ω, a tensile strength of at least 1,000 MPa and a Young’s modulus of at least 450 GPa, since it has been held that where the general conditions of a claim is disclosed in the prior art, discovering the optimum ranges involves only routine skill in the art. In re Aller, 105 USPQ 233. The ranges as claimed above increases the toughness, wearability and conductivity of the bearing and selecting specific values within these ranges for the known characteristics of all materials does not make the invention novel or inventive.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Pope, USP 6,655,845, in view of Setiadi, US PGPub 2010/0140790.
Pope discloses the claimed invention but fails to disclose that the roller bearing unit has a volume-weighted arithmetic mean coefficient of thermal expansion of at most 5.0 ppm/K throughout the volume of the roller bearing unit.
Setiadi teaches a polycrystalline diamond having a thermal expansion of 1.5-1.8 ppm/K (which is within the scope of at most 5.0 ppm/K) (see Table 1).
It would have been obvious to one having ordinary skill in the art at the time at the time of effective filing to modify polycrystalline diamond of Pope and provide a thermal expansion is at most 5.0 ppm/K, as taught by Setiadi, the selection of a known thermal expansion value for a particular material is not new, novel or inventive and is a matter of selecting or discovering the optimum range for a particular variable of a material, selecting or discovering an optimum rang is not inventive, see In re Aller, 105 USPQ 233. In addition, as demonstrated by the prior art of record thermal expansion values within the claimed range where known prior to the invention by Applicant.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Pope, USP 6,655,845, in view of Matsuo, US PGPub 2017/0106454.
Pope, while disclosing that the material includes a Knoop hardness (see table 1), fails to disclose the Knoop hardness is at least 25 GPa.
Matsuo teaches a PCD material having a Knoop hardness of 35 to 44 GPa (which is with the range of at least 25 GPa as claimed) (see paragraph [0014]).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify the PCD of Pope so that the Knoop hardness is at least 25 GPa, as taught by Matsuo, in order to allow for increase toughness and wear resistance (characteristics defined and ultimately governed by the hardness of a material).
Claims 13-14 and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Pope, USP 6,655,845, in view of Ambury, US PGPub 2019/0344351.
Regarding claims 13, 14 and 21, Pope fails to disclose that the roller bearing unit [clm 13] and the races [claim 21] comprises a plurality of different material being used or different grades of the same kind of super–hard materials being used.
Ambury teaches that the concept of using different grades of polycrystalline material is old and well known and may be used for the purpose of providing different Young’s modulus, different rupture strength and different toughness in different areas (see paragraph [0084]-[0085]).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify the polycrystalline diamond of Pope so that it comprises different grades of polycrystalline diamond material, as taught by Ambury, for the purpose of providing different Young’s modulus, different rupture strength and different toughness in different areas.
With specific regards to claim 14, varying the characteristics of the material as taught above results in microstructural changes in the polycrystalline super-hard material along all dimensions of the rolling element and thus the combination above further renders obvious variations in the material along distances from the bearing surface. Different grades in different layers of the material is specifically discussed in the teaching reference to Ambury, see paragraph 0085.
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Pope, USP 6,655,845, in view of Wort, US PGPub 2018/0266013.
Pope fails to disclose that the Young’s modules, tensile strength, electrically resistivity, thermal conductivity or coefficient of thermal expansion is isotropic or uniform in magnitude throughout the volume of the roller bearing unit.
Wort teaches a polycrystalline diamond material having uniform mechanical and thermal properties (see paragraph [0052]).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify the super hard material of Pope so that the polycrystalline diamond material has both uniform mechanical and thermal properties (which would be inclusive of conductivity and thermal expansion), as taught by Wort, in order to prevent fluctuations in the conductivity and disproportionate thermal expansion (the result of materials being of uniform consistency throughout).
Claims 31 are rejected under 35 U.S.C. 103 as being unpatentable over Pope, USP 6,655,845, in view of Peterson, USP 9,784,313.
Regarding claim 31, Pope discloses the claimed invention except for a method of shaping/manufacturing a PCD element by electro-discharge machining (EDM).
Peterson discloses that polycrystalline diamond was known to be processed by electro-discharge machining (EDM-see abstract and summary of the invention).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to process the elements in Pope using any known method including electro-discharge machining, as taught by Peterson, since using a previously known method for processing the same material provides the same predictable result of producing the final product. Using previously known methods to make parts made out of the same type of material is not new, novel or inventive but is rather a matter of using known processes in the same manner to produce a product, this does not result in a patentable distinction.
Response to Arguments
Applicant's arguments filed July 23, 2026 have been fully considered but they are not persuasive.
Applicant argues that Pope fails to disclose the polycrystalline material having a mean mass density of at most 4.5g/cm3. Applicant basis this argument the mixture of diamond and binder is a “pre-sintered mixture” with the density of 2.6g/cm3 and the mixture is not a polycrystalline super-hard material. First the disclosure of Pope is directed toward diamond and polycrystalline diamond materials, thus is inclusive of a sintered polycrystalline diamond and sintered polycrystalline diamond materials are repeatedly mentioned in the disclosure. Second, the material in question is disclosed as having a density less than the 4.5 g/cm3 recited by the claim, Applicant argues that the additional working changes this however upon further consideration and searching the simple nature of disclosing the use of polycrystalline diamond material in Pope anticipates the claimed invention as the properties claimed are common to polycrystalline diamond. The attached material property data sheet shows that polycrystalline diamond has a density range of 3-4 g/cc or g/cm3 and a thermal conductive of 1200-1800 W/m-K, thus it appears that Applicant is claiming properties already commonly known to be a characteristic of polycrystalline diamond and thus the disclosure of the material alone in the reference anticipates 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.
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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