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 .
Drawings
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, the “substrate is press fit into the carrier member” together with “the base member includes a wall, and the at least one bearing element includes: a key that engages the wall” of claim 21; the “the base member comprises...a plurality of pockets” of claim 22 together with “the substrate is press fit into the carrier member” of claim 21; the “bearing element is positioned at least partially within a respective pocket of the plurality of pockets using the superhard table” of claim 23 together with “the at least one bearing element includes a key that engages the wall” of claim 21; the “at least one mechanical fastener is located within a respective opening of the plurality of openings” of claim 24 together with “the substrate is press fit into the carrier member” and/or “the base member includes a wall, and the at least one bearing element includes: a key that engages the wall to inhibit rotation of the at least one bearing element” of claim 21; the “structure adjacent to the base member” of claim 25; the “at least one mechanical fastener is positioned at the back surface of the base member to engage with a structure adjacent to the base member to at least partially prevent movement of the at least one mechanical fastener relative to the carrier member” of claim 25 together with “the substrate is press fit into the carrier member” and/or “the base member includes a wall, and the at least one bearing element includes: a key that engages the wall to inhibit rotation of the at least one bearing element” of claim 21; the “at least one bearing element includes a recess that is the anti-rotation feature, the recess configured for engagement with the wall of the base member, and wherein the superhard table is a polycrystalline diamond table” of claim 28 together with “the substrate is press fit into the carrier member” of claim 21; the “a base member including a wall” of claim 30 together with “the at least one bearing element being coupled to the base member by a press fit” of claim 30; the “the at least one bearing element further comprises a carrier member coupled to the substrate of the at least one bearing element” of claim 31 together with “the at least one bearing element being coupled to the base member by a press fit” of claim 30; the “retaining member coupled to the base member” of claim 32 together with “the at least one bearing element being coupled to the base member by a press fit” of claim 30; the “abutment shoulder engaging the retaining member such that the abutment shoulder is physically captured between the base member and the retaining member” of claim 33 together with “the at least one bearing element being coupled to the base member by a press fit” of claim 30; the “providing a base member including a wall” and “attaching the at least one bearing element to the base member with an interference fit” of claim 36; the “attaching the substrate of the at least one bearing element to a carrier member and coupling the carrier member to the base member” of claim 38 together with “attaching the at least one bearing element to the base member with an interference fit” of claim 36; and the “coupling the carrier member to the base member comprises coupling the carrier member to the base member with a fastener” of claim 39 together with the “providing a base member including a wall” and “attaching the at least one bearing element to the base member with an interference fit” of claim 36 and “attaching the substrate of the at least one bearing element to a carrier member and coupling the carrier member to the base member” of claim 38 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) 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. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. 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.
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.
Claims 21-40 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.
Claim 21 recites “a carrier member; a base member; at least one bearing element coupled to the carrier member by a press fit” and “the substrate is press fit into the carrier member”. The bearing element and more specifically the substrate being press fit into the carrier is only shown in the embodiment of Fig. 5. Claim 21 further recites “”the base member includes a wall, and the at least one bearing element includes: a key that engages the wall to inhibit rotation of the at least one bearing element”. The original disclosure does not describe “the substrate is pressed fit into the carrier member” together with “the at least one bearing element includes a key that engages the wall of the base member”. As shown in Fig. 5, the at least one bearing element cannot engage with the wall of the base member since the carrier element is provided therebetween. Furthermore, Figures 5, 6A and 6B only disclose the carrier member having a key that engages with the wall of the base member. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 22 recites “a plurality of openings extending through the base member, each opening…extending from a bottom surface of a respective pocket of the plurality of pockets to the back surface”. Claim 21 previously recited “the substrate is press fit into the carrier member” and “the base member includes a wall, and the at least one bearing element includes: a key that engages the wall to inhibit rotation of the at least one bearing element”. The original description does not disclose how the limitation of claim 22 can be used together with either limitation of claim 21. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 23 recites “the substrate of the at least one bearing element is positioned at least partially within a respective pocket of the plurality of pockets”. Claim 21 previously recited “the substrate is press fit into the carrier member”. The original description does not disclose how the limitation of claim 23 can be used together with either limitation of claim 21. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 24 recites “the at least one mechanical fastener is located within a respective opening of the plurality of openings”. Claim 21 previously recited “the substrate is press fit into the carrier member” and “the base member includes a wall, and the at least one bearing element includes: a key that engages the wall to inhibit rotation of the at least one bearing element”. The original description does not disclose how the limitation of claim 24 can be used together with either limitation of claim 21. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 25 recites “the at least one mechanical fastener is positioned at the back surface of the base member to engage with a structure adjacent to the base member to at least partially prevent movement of the at least one mechanical fastener relative to the carrier member”. Claim 21 previously recited “the substrate is press fit into the carrier member” and “the base member includes a wall, and the at least one bearing element includes: a key that engages the wall to inhibit rotation of the at least one bearing element”. The original description does not disclose how the limitation of claim 25 can be used together with either limitation of claim 21. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 28 recites “the at least one bearing element includes a recess that is the anti-rotation feature, the recess configured for engagement with the wall of the base member, and wherein the superhard table is a polycrystalline diamond table.” Claim 21 previously recited “the substrate is press fit into the carrier member”. The original description does not disclose how the limitation of claim 28 can be used together with the limitation of claim 21. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 30 recites “a base member including a wall” and “the at least one bearing element being coupled to the base member by a press fit”. The original description does not disclose how the limitations of claim 30 can be used together. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 31 recites “the at least one bearing element further comprises a carrier member coupled to the substrate of the at least one bearing element”. Claim 30 recites “the at least one bearing element being coupled to the base member by a press fit”. The original description does not disclose how the limitation of claim 31 can be used together with the limitation of claim 30. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 32 recites “a retaining member coupled to the base member”. Claim 30 recites “the at least one bearing element being coupled to the base member by a press fit”. The original description does not disclose how the limitation of claim 32 can be used together with the limitation of claim 30. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 33 recites “an abutment shoulder engaging the retaining member such that the abutment shoulder is physically captured between the base member and the retaining member”. Claim 30 recites “the at least one bearing element being coupled to the base member by a press fit”. The original description does not disclose how the limitation of claim 33 can be used together with the limitation of claim 30. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 36 recites “providing a base member including a wall” and “attaching the at least one bearing element to the base member with an interference fit”. The original description does not disclose how the limitations of claim 36 can be used together. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 38 recites “attaching the substrate of the at least one bearing element to a carrier member and coupling the carrier member to the base member”. Claim 36 recites “attaching the at least one bearing element to the base member with an interference fit”. The original description does not disclose how the limitation of claim 38 can be used together with the limitation of claim 36. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
Claim 39 recites “coupling the carrier member to the base member comprises coupling the carrier member to the base member with a fastener.” Claim 36 recites “providing a base member including a wall” and “attaching the at least one bearing element to the base member with an interference fit”. Claim 38 recites “attaching the substrate of the at least one bearing element to a carrier member and coupling the carrier member to the base member”. The original description does not disclose how the limitation of claim 39 can be used together with the limitations of claim 36 and 38. Applicant is reciting limitations from two separate embodiments (Fig. 2 and Fig. 5). Applicant has failed to disclose how the limitations of both embodiments can be combined.
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.
Claims 21-40 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.
Claim 21 recites “at least one bearing element coupled to the carrier member by a press fit” and “wherein the base member includes a wall, and the at least one bearing element includes: a key that engages the wall to inhibit rotation of the at least one bearing element”. It is unclear how the bearing element can be both press fit into the carrier member while also having a key that engages a wall of the base member.
Claim 25 recites “the at least one mechanical fastener is positioned...to engage with a structure”. It is unclear if the structure is one of the elements previously recited (such as the carrier or the bearing element) or if the structure is a new and separate element/feature.
Claim 30 recites “the at least one bearing element is further attached to the base member by another, different coupling technique” and “the at least one bearing element includes at least one of: a key that engages the wall to inhibit rotation of the at least one bearing element; or an anti-rotation feature”. It is unclear if the key and/or anti-rotation feature is the “another, different coupling technique” or if there must be yet another coupling technique beyond the press fit, key and anti-rotation feature.
Claim 36 recites “providing…at least one of feature to inhibit rotation of the at least one bearing element; attaching the at least one bearing element to the base member with an interference fit; and further attaching the at least one bearing element to the base member by another, different coupling technique”. It is unclear if the “at least one of feature to inhibit rotation of the at least one bearing element” is the same as either the interference fit or the “another, different coupling technique” or if yet another coupling technique beyond the interference fit and the at least one feature to inhibit rotation.
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 21, 26-27, 30-40 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Peterson U.S. 2015/0233423.
Re clm 21, Peterson discloses a bearing assembly (Fig. 3-4) comprising: a carrier member (24); a base member (20); at least one bearing element (30) coupled to the carrier member by a press fit ([0038]), wherein the at least one bearing element includes a superhard table (36) bonded to a substrate (38); and at least one mechanical fastener (44) configured to couple the carrier member to the base member; wherein the substrate is press fit into the carrier member; and wherein the base member includes a wall (one surface of base 20), and the at least one bearing element includes an anti-rotation feature (brazing, press-fitting, threaded attachment, pin attachment, bonding, frictional engagement, and/or by any other suitable attachment technique, without limitation; [0038]).
Re clm 26, Peterson further discloses the carrier member is at least one of brazed or welded to the at least one bearing element ([0038]).
Re clm 27, Peterson further discloses carrier member is at least one of brazed or welded to the base member ([0035]).
Re clm 30, Peterson discloses a bearing assembly comprising: a base member (20, Fig. 3-4) including a wall (an outer surface of 20); and at least one bearing element (30) comprising a superhard table (36) bonded to a substrate (38), the at least one bearing element being coupled to the base member by a press fit (indirectly via element 24; [0038]); wherein the at least one bearing element is further attached to the base member by another, different coupling technique (brazing, press-fitting, threaded attachment, pin attachment, bonding, frictional engagement, and/or by any other suitable attachment technique, without limitation; [0038]); wherein the at least one bearing element includes an anti-rotation feature (such as brazing or pin attachment; [0038]).
Re clm 31, Peterson further discloses the at least one bearing element further comprises a carrier member (24) coupled to the substrate of the at least one bearing element.
Re clm 32, Peterson further discloses a retaining member (44) coupled to the base member.
Re clm 33, Peterson further discloses the carrier member comprises an abutment shoulder (where head of bolt 44 contacts upper portion of 24) engaging the retaining member such that the abutment shoulder is physically captured between the base member and the retaining member.
Re clm 34, Peterson further discloses carrier member is at least one of brazed or welded to the base member ([0035]).
Re clm 35, Peterson further discloses the at least one bearing element is at least one of brazed or welded to the base member (indirectly via 24; [0035] and [0038]).
Re clm 36, Peterson discloses a method of providing a bearing assembly, the method comprising: providing a base member (20, Fig. 3-4) including a wall (any outer surface of 20); providing at least one bearing element (30) comprising a superhard table (36) bonded to a substrate (38) and at least one of feature to inhibit rotation of the at least one bearing element ([0038]); attaching the at least one bearing element to the base member with an interference fit (indirectly via 24; [0038]); and further attaching the at least one bearing element to the base member by another, different coupling technique ([0035] and [0038]).
Re clm 37, Peterson further discloses attaching the at least one bearing element to the base member by the another, different coupling technique comprises at least one of brazing or welding the at least one bearing element to the base member (indirectly via 24; [0035] and [0038]).
Re clm 38, Peterson further discloses attaching the at least one bearing element to the base member by the another, different coupling technique comprises attaching the substrate of the at least one bearing element to a carrier member (24; [0038]) and coupling the carrier member to the base member ([0035]).
Re clm 39, Peterson further discloses coupling the carrier member to the base member comprises coupling the carrier member to the base member with a fastener (44; [0035]).
Re clm 40, Peterson further discloses coupling the carrier member to the base member comprises at least one of brazing or welding the carrier member to the base member ([0035]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN B WAITS whose telephone number is (571)270-3664. The examiner can normally be reached Monday-Thursday from 6-4 EST.
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/ALAN B WAITS/Primary Examiner, Art Unit 3617
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