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 .
Information Disclosure Statement
The IDS documents include a number of NPL citations directed as application, however no copies are provide and all of the applications listed have been published. The references have been crossed off the IDS document, however other citations in the IDS cover these citations making the information duplicate or the corresponding publication has been cited on the attached PTO-892. No further action regarding this issue is needed by Applicant.
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 reversed configuration with the bushing being inside the inner ring (alternative of claim 4), the second cylindrical surface of the bushing including the grooves (claim 9, see rejection under 35 USC 112 below) and the electric motor and corresponding features (claims 14 and 15) 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 Objections
Claim 1 is objected to because of the following informalities:
Regarding claim 1, the disclosed invention includes two flanges that extend radially inward from the bushing, specifically inward from the first cylindrical surface, however in referencing the second flange Applicant appears to have mistakenly stated that it extends “radially from the second cylindrical surface” instead of - - radially from a second end of the first cylindrical surface- -. The claim should be rephrased as suggested.
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 4-5 and 9 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 4 is attempting to claim an unillustrated embodiment where the bushing is within the inner ring of the bearing and states that the second flange is greater than the second ring which is being redefined as the inner ring. However, in order for this to be the case and preserve the rest of the invention relative to the diameter of the first flange being one that allows for the corresponding ring to be easily inserted the first flange would have to have a diameter less than the second flange in this embodiment but claim 1 is stating the opposite to be true (the diameter of the second flange is “less” than that of the first or in other word the first is greater than the second). How can the second flange ultimately have a diameter that is both greater than and less than the first flange? The issue in this case is that Applicant has attempted to keep the first part of the independent claim generic by using “first ring” and “second ring”, however the actual relationship and relative dimensions cannot be compared in a generic manner, in this case the two separate embodiments should be claimed separately in independent claims.
Claim 9 states that the second cylindrical surface of the bushing includes grooves and the insert has ribs that extend into the groove and it is unclear how this is possible as claim 1 established that the second cylindrical surface is the surface that faces away from the bearing (claim 1 requires the insert to be between the first cylindrical surface of the bushing and the second cylindrical surface of the bearing ring). If the insert is between the first surface of the bushing and the second surface of the ring how does it engage in a groove that is on the second surface of the bushing? In this case claim 9 should state “first cylindrical surface” and in doing so the drawing objection above would also be resolved.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1 and 14 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Arnault, US PGPub 2025/0286427 .
The applied reference has a common assignee and one common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding claim 1, Arnault discloses a bearing device comprising: a bearing (10) including a first ring (12) and a second ring (14) configured to rotate relative to each other, the second ring (14) having a first cylindrical surface (14b) and a second cylindrical surface (14a) radially spaced from the first cylindrical surface, a bushing (24) having an axial length, a first cylindrical surface (24b), a second cylindrical surface (24a) radially spaced from the first cylindrical surface of the bushing, a first flange (31) extending radially from a first end of the first cylindrical surface and a second flange (27) extending radially from the second cylindrical surface [a second end of the first cylindrical surface], and an electrically insulating insert (26) overmolded (see paragraph 003) between and connecting the first cylindrical surface (24b) of the bushing and the second cylindrical surface (14a) of the second ring, wherein the first flange (31) has a free edge having a first diameter and the second flange (27) has a free edge having a second diameter less than the first diameter (the diameter of the opening defined by the second flange is smaller than the diameter of the opening defined by the first flange just like in the instant application), and wherein the insulating insert is overmolded on the first flange and the second flange (the insert contacts and covers part of the flanges just like in the instant application).
Regarding claim 14, Arnault discloses an electric motor (see paragraph 0003) comprising: a casing (housing in paragraph 0003), a shaft (paragraph 0003), and a bearing device according to claim 1 mounted radially between the casing and the shaft (the bearing supports the shaft within the casing/housing).
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 Back, USP 11,041,530.
Regarding claim 1, Back discloses a bearing device comprising: a bearing (26) including a first ring (inner ring) and a second ring (outer ring) configured to rotate relative to each other, the second ring having a first cylindrical surface (inner surface) and a second cylindrical surface (outer surface in contact with elastic material 16) radially spaced from the first cylindrical surface, a bushing (12) having an axial length, a first cylindrical surface (surface facing the bearing), a second cylindrical surface (surface facing away from the bearing) radially spaced from the first cylindrical surface of the bushing, a first flange (at 32) extending radially from a first end of the first cylindrical surface and a second flange (at 36) extending radially from the second cylindrical surface [a second end of the first cylindrical surface], and an insert (16) overmolded (product by process recitation, see MPEP 2113) between and connecting the first cylindrical surface of the bushing and the second cylindrical surface of the second ring, wherein the first flange (32) has a free edge having a first diameter (appears as dl1 in figure 1) and the second flange (36) has a free edge having a second diameter (dIS) less than the first diameter, and wherein the insert is overmolded (product by process) on the first flange and the second flange (the insert contacts and covers part of the flanges).
While disclosing that the insert is an elastomer, Back does not specifically disclose that the material is one that is electrically insulating.
It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Back and use any previously known elastomer including one that is electrically insulating, such as rubber, 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.
Regarding claim 2, Back discloses that the second ring is a radially outer ring and the second cylindrical surface is a radially outermost surface of the second ring (see figure 1), and wherein the second diameter (dIS) of the free edge of the second flange (36) is less than a diameter (dAL) of the radially outermost surface of the second ring.
Regarding claim 3, Back discloses that the first diameter (dl1) of the free edge of the first flange is greater than a [the] diameter (dAL) of the radially outermost surface of the second ring.
Regarding claim 4, Back further discloses that a similar configuration can be used when the bushing element is inside of a ring element (see 14 and 28 in figure 1) and in this configuration the first flange at 62 is a smaller diameter than the second flange at 43 and the second flange has a diameter greater than the inner diameter of 14. However, this feature in Back is not part of a configuration wherein the second ring is a radially inner ring and the second cylindrical surface is a radially innermost surface of the inner ring, and wherein the second diameter of the free edge of the second flange is greater than a diameter of the radially innermost surface of the second ring.
However, the modification is one involving a simple rearrangement of the working parts using an inner ring mounted via an elastic element. It would have been obvious to one having ordinary skill in the art at the time of effective filing to modify Back and reverse the mounting configuration to use an elastic mount on the inner ring which would include a similar configuration just connected to the inner ring, since it has been held that a mere reversal of essential working parts of a device involves only routine skill in the art (in re Gazda, 219 F.2d 449, 104 USPQ 400 (CCPA 1955)) or a rearrangement of the parts based on the desired mounting configuration and the parts that are desired to be insulated relative to each other (In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950) or In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975)).
Regarding claim 5, as a result of reversing the configuration in Back the first diameter of the first edge of the first flange would less than a diameter of the radially innermost surface of the second ring in a similar manner as that illustrated with respect to 28 in Back.
Regarding claim 6, Back discloses that the first flange (32) of the bushing is radially spaced from the second cylindrical surface of the second ring (see figure 2).
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Back, USP 11,041,530, in view of Williams, USP 6,517,251.
Regarding claims 14 and 15, Back discloses a casing (14) and a shaft (drive shaft supported by inner bearing ring, see at least column 1, lines 15-20).
Back does not disclose that the casing and shaft are specifically parts of an electric motor.
Williams teaches that ball bearings and the corresponding mounting structure that is elastomeric (disclosed as rubber) and acts to insulate the bearing can be part of electric motors (see abstract and col 2, line 64-col 3, line 7.
It would have been obvious to one having ordinary skill in the art and use the configuration disclosed in Back within any device that includes bearings mounted using and elastomeric mounting member to insulate the bearing, including an electric motor, as taught by Williams, since substituting different bearing assemblies within devices that already used similar bearings is a matter of routine substitution and regardless of the particular bearing set and device the bearing performs the same function of rotatably supporting a moving object relative to a stationary object.
Allowable Subject Matter
Claim 7, and claims depending therefrom (pending correction for any issues raised under 35 USC 112), 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:
The prior art of record does not teach nor render obvious the claimed combination of claim 1-3, including the dimensional relationships of claims 2 and 3, with the additional requirement that the outer ring have grooves on the end faces and the flanges on the bushing being positioned where the first flange is spaced from the first groove and the second flange partially extends into the groove.
Conclusion
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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