Ex parte HILL - Page 3




              Appeal No. 96-1602                                                                                           
              Application 08/168,669                                                                                       


                     (a) claims 1-4 and 7, unpatentable over Skorka in view of Parrish, Muck, Marsh and                    
              Miyazawa;                                                                                                    
                     (b) claims 1-4 and 7, unpatentable over Hoerle in view of Marsh and Miyazawa; and                     
                     (c) claims 1-4 and 7, unpatentable over Skorka in view of Hoerle, Marsh and                           
              Miyazawa.                                                                                                    
                     Considering first rejection (a), independent claim 1 calls for, inter alia, “means along              
              the inner circumference of the inner race for cooperating with a bearing insert tool for                     
              removing and inserting the bearing insert from the hub of the skate wheel . . . .”                           
              Independent claim 7 contains a similar limitation but specifies the means in question as                     
              being “an annular inner groove formed within the central axis bore along the inner                           
              circumference of the inner race . . . .”  The examiner concedes that Skorka, the primary                     
              reference, does not teach this claimed feature.  Nevertheless, the examiner has taken the                    
              position that                                                                                                
                     Miyazawa et al. discloses using a groove 221a for cooperation with a                                  
                     bearing puller to remove a bearing.  Accordingly, one having ordinary skill in                        
                     the art would have found it obvious to provide a groove on the bearing                                
                     inserts of Skorka in order to provide for quick and easy removal of the                               
                     inserts by engagement of the groove with a bearing puller. [Answer, page 4.]                          
                     Recognizing that this modification would not necessarily result in a construction that                
              would correspond to the claimed subject matter (the claims call for the means for removing                   
              and inserting, or annular groove, to be located along the inner circumference of the inner                   


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