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 .
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(p)(5) because they include the following reference character(s) not mentioned in the description: 2b, 4a, 4b, 4c.
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, an embodiment were the members are part of a linear bearing (claim 7) and an embodiment were the members are gears (claim 8) must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d), or amendment to the specification to add the reference character(s) in the description in compliance with 37 CFR 1.121(b) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The disclosure is objected to because of the following informalities:
RLo is a standard symbol and the “Lo” portion is a subscript, all occurrences of “RLo” in the disclosure (specification, claims and drawings) should read - -RLo- -
The description of RLo in paragraph 0028 is confusing and “extended length of profile” appears to be stating that the profile itself is extend. This paragraph should be rephrased to avoid “extended length of profile” and explain the feature in normal terms, specifically this roughness parameter represents a percentage increase in the actual surface profile length compared to the ideal smooth surface length. In other words all the peaks and valleys are measured to define a length of the surface not that the part is actually being extended.
The listing of reference characters at the end of the specification is incomplete, this should include all reference characters used in the application, however this list is not a requirement in US practice and can be removed completely.
Appropriate correction is required.
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) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Himeno, USP 2013/0182987.
Regarding claim 1, Himeno discloses a sliding member in which a first member (1/14/19) and a second member (5/6/7 or 11/12/13 or 16/17/18) having a higher hardness than the first member (the first member is a resin cage, see paragraphs 0038 and 0039, and the second members are steel elements of a steel rolling element bearing, see paragraphs 0117 and 0147 disclosing that bearings used in the testing are steel bearings) slide against each other via a lubricant (see paragraphs 0076 and 0086).
Himeno also discloses providing particular roughness values to surfaces 14a, 14b and 14c of the resin cage, or in other words the surface roughness feature is applied to the first member where it would contact the second member (one of the bearing rings or the rolling element), see paragraph 0076.
Himeno defines the roughness using Ra values and thus does not disclose an isotropic texture in which a valley area is 1000 µm²/mm or more and 20000 µm²/mm or less and RLo (c: 0.08 mm) is 1% or more and 12% or less.
First, Applicant is defining what is ultimately the surface roughness using non-traditional methods within the field of bearings. Second, regardless of how the surface roughness is ultimately defined surface roughness in the field of bearings, specifically in the regions claimed, is a known result effective variable. Himeno further discloses that the particular roughness values that they limit the device to are to meant to provide a device that has the desired lubricant oil retention performance while preventing excessive roughness to prevent the parts from being worn out (paragraph 0076). Therefore, regardless of how the roughness is defined the invention claimed by Applicant is a matter of optimizing a known result effective variable. Because of this it can be concluded that it would have been obvious to one having ordinary skill in the art at the time of effective filing to select a roughness profile that includes an isotropic texture in which a valley area is 1000 µm²/mm or more and 20000 µm²/mm or less and RLo (c: 0.08 mm) is 1% or more and 12% or less, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The claim limitations would also have been obvious since it has been held that where the general conditions of a claim are disclosed in the prior art (bearing/cage combination with surface roughness features in the same locations), discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
It is also noted that in the disclosure of the instant application Applicant states the invention provides an “optimized profile” to the device of the disclosed prior art (paragraphs 0005 and 0006). Optimizing a previously known device or parameter within a device is not, on its own, inventive.
Regarding claims 2, 3 and 4, Himeno does not disclose the specific valley areas of the roughness profile being in the range of 4000µm²/mm or more and 12000 µm²/mm or less (clm 2), 6000 µm²/mm or more and 12000 µm²/mm or less (clm 3) or 8000 µm²/mm or more and 10000 µm²/mm or less (clm 4).
However, as explained above, this is related to the surface roughness parameters and Himeno indicates that this is a result effective variable and therefore it would have been obvious to one having ordinary skill in the art at the time of effective filing to select a roughness profile that includes any valley area range, including valley areas from 4000-12000 µm²/mm or 6000-12000 µm²/mm or 8000-10000 µm²/mm, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). The claim limitations would also have been obvious since it has been held that where the general conditions of a claim are disclosed in the prior art (bearing/cage combination with surface roughness features in the same locations), discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 5, Himeno discloses that the first member is a resin member (the first member is a resin cage, see paragraphs 0038 and 0039), and the second member is a metal member or a ceramic member (the second member(s) are steel bearing elements, see paragraphs 0117 and 0147, also see explanation in the rejection of claim 1 above).
Regarding claim 6, Himeno discloses that the first member is a resin retainer of a rolling bearing, and the second member is a metal rolling element or a ceramic rolling element (resin cage and metal bearing elements, specifically figure 3 shows a cylindrical roller with the cage surface being 14a, surface 14a forms a sliding relationship with the end of the roller 13).
Claim(s) 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Himeno, USP 2013/0182987, as applied to claim 5, in view of Nakashima, JP2000297816.
Regarding claim 7, Himeno discloses a standard radial ball or roller bearing with metal rolling elements as explained above. Himeno does not disclose that the rolling elements are part of a linear motion device and the first member is a spacer interposed between the rolling elements.
Nakashima teaches the known bearing configuration of a linear motion device that includes rolling elements (6a, 6b) separated by spacer elements (10).
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Himeno and place the surface roughness features into any previously known bearing device where sliding contact can occur, including between rolling elements and spacers of a known linear guide device, as taught by Nakashima, since substituting or applying the features of known bearings into another bearing configuration provides the same predictable result of providing a bearing arrangement with improved lubrication/friction properties (the purpose of Himeno) to another previously known bearing type, linear bearings.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Himeno, USP 2013/0182987, as applied to claim 5, in view Toru, JP8-226526.
Himeno does not disclose that the sliding member arrangement is part of a gearing configuration with the first member being a resin gear, and the second member is a metal gear or a ceramic gear.
Toru teaches that sliding contact improvements also apply to gearing systems using a resin gear and a metal gear (see attached translation discussing a plastic worm wheel 4 and a metal worm gear 3).
It would have been obvious to one skilled in the art at the time of effective filing to use the teaching of surface roughness applied to sliding contact surfaces of Himeno in any device where this is a known concern, including in a resin and metal gear combination like that taught by Toru, since substituting or applying the features of known sliding contact surfaces into another device that also has sliding contact between the relatively moving parts provides the same predictable result of providing an arrangement with improved lubrication/friction properties (the purpose of using the surface roughness parameters of Himeno) to another previously known sliding contact configuration.
NOTE: Regarding claims 6-8, these claims are generally defining the intended use of the “sliding member”, applying the concept of selecting specific roughness values for sliding contact applications from Himeno into any other device that has sliding contact that must be controlled or regulated would be within the level of ordinary skill. The environment in which the overall concept of optimizing sliding contact is used does not provide a patentable distinction over the disclosure of Himeno which is concerned with the same problem as the instant application.
Conclusion
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/JAMES PILKINGTON/ Primary Examiner, Art Unit 3617
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