Ex parte HILL - Page 5




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


              reference relied upon by the examiner for a teaching of means for cooperating with a                         
              bearing insert tool for removing and inserting a bearing insert is Miyazawa, which                           
              discloses a bearing puller groove 221a provided on the outer circumference of the outer                      
              bearing race for this purpose.  In our opinion, the examiner’s position to the effect that it                
              would have been within the realm of skill in the art to provide the bearing puller groove of                 
              Miyazawa on the inner circumference of the inner bearing race of Skorka is speculative,                      
              based on hindsight, and not fairly suggested by the reference teachings themselves.                          
                     We have also reviewed the Parrish, Muck and Marsh references applied by the                           
              examiner against the appealed claims in rejection (a), but find nothing therein which makes                  
              up for the deficiencies of Skorka and Miyazawa noted above.  Accordingly, we cannot                          

              sustain the examiner’s rejection of the appealed claims under 35 U.S.C. § 103 as being                       
              unpatentable over Skorka in view of Parrish, Muck, Marsh and Miyazawa.                                       
                     Turning to rejection (c), this rejection is likewise founded in part on the proposition               
              that it would have been obvious to one of ordinary skill in the art to provide a groove on the               
              inner circumference of the inner race of Skorka’s bearing insert in view of Miyazawa.  For                   
              the reasons discussed above, the examiner’s position in this regard is not well taken.                       
              Further, the Hoerle, and Marsh references additionally relied on do not make up for the                      
              deficiencies of Skorke ad Miyazawa.  It follows that this rejection also cannot be sustained.                




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