6Notice 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 the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3 and 7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1, the amendment to the claim has introduced a hardness value, however the claim provides an open-ended range of 500 or less (see rejection under 35 USC 112(b) below) which covers all values under 500 which is not supported by the original disclosure. The disclosure, relative to the apparatus, defines a lower limit of 300, while this is listed as “preferable” there is no other disclosure in the instant application for values less than 300 and in fact when discussing the method it is explained that the precursor material, prior to hardening, has a hardness value of 200Hv, thus at the very least the minimum value would have to be greater than 200 Hv and the claim covers values less than that thus introducing the new matter. It is further noted that paragraph 0066 appears to specifically limit the range to 400-500 Hv.
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, 3 and 7 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 1, in line 2 and in other locations in the claim Applicant has changed “shell-type outer ring” to “shell-shaped outer ring”, however it is unclear what shapes this actually limits the outer ring to. A “shell-type” bearing is a known term in the art which limits the claim to thin pressed or drawn shells that form the outer ring, however “shell-shape” is not a term of art and it is unclear what shapes this includes and excludes, it is further unclear how a drawn cylindrical shape would be considered “shell-shaped”. Either the claim should return to the original language or “shell-shaped” can be removed from the claim since the preamble established the device as a “shell-type” needler roller bearing which would be understood to have the thin wall drawn or pressed outer ring assembly.
Regarding claim 1, line 21 is defining the hardness as “500 or less” however the recitation provides no units and thus the scope of the claim is unclear. Hardness can be determined using different tests and/or reported using different units, without reciting the units the actual scope of the invention is unclear. The claim should recite that the hardness is 500 Hv (or range) to match the disclosure.
Regarding claim 1, the last clause of the claim has been rolled up from original claim 2. The recitation still requires the claim to have surface roughness values for the outer ring outer surface, however based on the specification these appear to be preliminary values that are meant to prevent the outer ring part from seizing in the manufacturing device and it is unclear from the disclosure if this is a final property of the bearing or an intermediate configuration. Is the steel placed in the pressing device with these values or is it through the repeated pressing steps this is the result? If the latter how is the result being achieved and controlled as each subsequent pressing will alter the surface roughness, or in other words is that which claimed in reference to the intermediate product or precursor material or is this a feature of the final product? If the final product where in the original disclosure does it recite the final surface roughness values after the part is completely formed?
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new grounds of rejection does not rely on any previous grounds of rejection for any teaching or matter specifically challenged in the argument.
With regards to the last rejection under 35 USC 112 above, as noted in the rejection the recitation is rolled up from original claim 2, however in the remarks Applicant makes no specific argument regarding the previously presented rejection and thus the position 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JAMES PILKINGTON/Primary Examiner, Art Unit 3617
Prosecution Insights