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
Claim 19 is objected to because of the following informalities:
Claim 19 is redundant within itself as it states that rotating one of the rings “relative” to the other comprises “rotating the inner support ring relative to the outer support ring” however both recitations rely on the phrase “relative” which does not require any particular ring to be held stationary while the other rotates. Because of this both recitations of the claim allow for anyone of the rings to be held stationary while the other rotates and regardless of which one is held all the relative movement would be “relative”.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 19 and 20 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Regarding claim 19, as explained in the objection above, the use of “relative” does not actually require any particular ring to be held stationary. The amendment to claim 16 further defines the same movement as “relative” and thus claim 19 does not add any additional method step nor does the recitation exclude any options from the method of what part moves because of the generic use of “relative. Because of this claim 19 fails to further limit claim 16.
Similarly, claim 20 states a step of contacting the parts “when” the rings tilt relative to each other, however the amendment to claim 16 now requires contacting the elements and then orienting the axis of one ring at an oblique angle relative to the other, this is the same tilt referenced in claim 20. The step of claim 20 has been incorporated into claim 16 using different phrasing and thus claim 20 also fails to further limit the claim combination.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 16, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cooley, USP 9,016,405 (also published as US PGPub 2012/0039551).
Regarding claim 16, Cooley discloses a method of using a radial sliding bearing (figures 6a and 6b, the angled bearing surfaces define a combination radial/thrust bearing and thus is still a form of radial sliding bearing), the method comprising: contacting a first plurality of superhard contact elements (632) on an inner support ring (630) with a second plurality of superhard contact elements (642) on an outer support ring (640) (in order to make the bearing the bearing surfaces of the elements are placed in contact with each other); orienting an inner ring axis of the inner support ring and an outer ring axis of the outer support ring at an oblique angle relative to one another (see column 13, lines 24-38 which states that the inner ring can rotate independently about the three orthogonal axes x, y and z shown in figure 6b, this allows the inner ring axis to be at an oblique angle relative to the outer ring axis); and rotating one of the inner support ring or the outer support ring relative to the other of the inner support ring or the outer support ring (this is normal operation of any rotary bearing, when the axes are not aligned between the two bearing ring in Cooley there can still be relative rotation).
Regarding claim 19, Cooley discloses that rotating one of the inner support ring or the outer support ring relative to the other of the inner support ring or the outer support ring comprises rotating the inner support ring relative to the outer support ring (in a bearing both rings rotate “relative” to each other).
Regarding claim 20, Cooley discloses contacting the first plurality of superhard contact elements with the second plurality of superhard contact elements when the inner support ring tilts relative to the outer support ring (as explained above the elements are placed in contact and then the rings are oriented at an oblique angle in claim 16, this is the same tilt referenced in claim 20 and thus claim 20 is rejected for the same reasons as explained above).
Allowable Subject Matter
Claims 1-15 are allowed.
Claim 17 and dependent claim 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the prior art of record does not teach nor render obvious the claimed combination of inner and outer support rings, each with superhard (PCD or other like material) bearing elements, wherein the elements on the inner support ring collectively contact a generally arcuate reference surface while each of the elements one the second support ring define a substantially planar surface opposing the inner ring assembly and wherein an outer diameter of the bearing surfaces of the inner ring assembly is larger than an inner diameter of the bearing surfaces of the second ring assembly (or in other words the bearing surfaces are inclined relative to the rotational axis so at least the smallest diameter of the outer ring assembly is smaller than the largest diameter of the inner ring).
Claim 11 defines a similar configuration to claim 1, however instead of comparing diameters the claim explicitly states that the bearing surfaces of each element is oriented at an oblique angle relative to the corresponding ring axis. Like in claim 1 above the prior art of record does not disclose the combination of bearing assemblies with the outer ring having elements that are substantially planar and both bearing assemblies have bearing surfaces inclined or tilted relative to the rotational or central axis.
Regarding claim 17, the combination with claim 16 is defining a method of using a bearing that includes the same substantially planar elements in a manner that results in the planar surface being tiltable relative to the other bearing surfaces. The combination of shapes and the same use/function of the bearing is not disclosed in the prior art of record.
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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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