Ex parte KOBAYASHI et al. - Page 4




          Appeal No. 2000-0008                                        Page 4          
          Application No. 08/842,990                                                  


          the hollow stock is reduced but the internal diameter is not                
          substantially changed.                                                      
               Bononi discloses a cold forging method in which both                   
          inside and outside diameters are reduced (Col. 3, lines 46 to               
          53; Col. 4, lines 25 to 26).                                                
               U.S. Steel is silent about the reduction of wall                       
          thickness in cold forging of a hollow stock.                                
               Hotta discloses a gear shaft manufacturing method in                   
          which a mandrel is inserted into several successive hollow                  
          shaft workpieces.  In one step of the process a mandrel 3d is               
          inserted into the shaft hole of workpiece M2 and the lower                  
          part outer diameter is reduced to a smaller diameter by                     
          extrusion and M3 is formed. The inner diameter of M3 appears                
          unchanged.  (See Figure 1).                                                 
               The examiner states:                                                   
                    It would have been obvious to one having                          
                    ordinary skill in the art at the time the                         
                    invention was made to employ a mandrel, as                        
                    shown by Hotta, in Figure 10 extrusion of                         
                    Bononi et al. in order to obtain controlled                       
                    wall thickness and inner diameter merely as                       
                    the utilization of knowledge clearly                              
                    available in the art for producing desired                        
                    characteristics in the product, and not a                         
                    patentable distinction absent a disclosure                        
                    of criticality in the solution of stated                          







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