DETAILED ACTION
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
Claims 6 and 14 are objected to because of the following informalities:
Claim 6, line 5, “it” should read - - the second part - -.
Claim 14, line 4, “it” should read - - the second part - -.
Appropriate correction is required.
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 1 – 20 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 claims 1, 10 and 20, the phrase "disc-like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d).
Claims 2 – 9, 11 – 17, 19 and 20 are rejected based on their respective dependence to claims 1, 10 and 20.
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) 1, 3, 18 and 20, as best understood, are rejected under 35 U.S.C. 102a1 as being anticipated by Fickert-Guenther et al. DE 102020101681 (incl. machine translation).
Claims 1 and 18, Fickert-Guenther discloses a drivetrain ([0002], l. 2: “a hybridized powertrain of a motor vehicle”) comprising: a rolling bearing arrangement 1 (Fig. 1)([0031], l. 1), wherein the rolling bearing arrangement comprises: a rolling bearing comprising bearing rings 3,4 ([0031], l. 2) and rolling bodies (rolling elements 5)([0031], ll. 2 – 3), one of the bearing rings comprising an inner ring 3 and another bearing ring comprises an outer ring 4, the inner ring comprising an inner ring raceway 6 ([0031], l. 4) and the outer ring comprising an outer ring raceway 7 ([0031], ll. 4 – 5), the rolling bodies mounted in a rolling manner between the inner ring and the outer ring; and a multi-part current-conducting element positioned between the inner ring and the outer ring, the multi-part current-conducting element comprising a first part (first running disc 8)([0031], l. 7) comprising a disc-like body and connected to the inner ring or the outer ring in a current-conducting ([0007], ll. 4 – 5: “[t]he first running disc can be made of an electrically conductive material, for example a metallic material”) and rotationally fixed manner, the multi-part current-conducting element comprising a second part (contact rolling elements 10)([0031], l. 13) connected to the other of the bearing rings in a current-conducting manner ([0008], ll. 3 – 7: “the surface of the first contact rolling element track can advantageously be designed to be abrasion-resistant, for example by means of a suitable surface treatment process and/or by applying a suitable additional layer of material, which may in particular also be suitable to improve the electrical conductivity between the first contact rolling element track and the contact rolling elements”), the second part of the current-conducting element rotatably movable relative to the bearing rings and the first part of the current-conducting element ([0031], ll. 15 – 16: “[t]he contact rolling elements 10 are mounted in a rolling manner between the first running disc 8 and the second running disc 9”).
Claims 3 and 20, Fickert-Guenther discloses the second part of the current-conducting element being formed in a loop (construed as a ring of rolling elements 10 mounted between the first and second running discs 9,10).
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) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fickert-Guenther et al. DE 102020101681 (incl. machine translation).
Claim 7, Fickert-Guenther discloses all of the limitations of claim 7, including the first part 9 of the current-conducting element comprising a cover disc.
Fickert-Guenther does not expressly disclose the cover disc being made of steel. However, Fickert-Guenther does disclose that the first part can be made of a metallic material ([0007], ll. 4 – 5). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to provide a cover disc made of steel, since Fickert-Guenther does disclose that the first part can be made of a metallic material ([0007], ll. 4 – 5), which includes steel, and 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.
Allowable Subject Matter
The claimed subject matter as a whole of Claims 2, 4 – 6, 8, 9 and 19 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claims 10 – 17 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Claim 10 is deemed allowable based on same subject matter (i.e., “the second part of the current-conducting element is arranged in the same axial plane as the first part of the current-conducting element”) set forth in allowable claims 2 and 19.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHILLIP A JOHNSON whose telephone number is (571)270-5216. The examiner can normally be reached M-F 9am - 5pm.
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/PHILLIP A JOHNSON/Primary Examiner, Art Unit 3617
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