Appeal No. 2005-0355 Page 6
Application No. 10/080,714
less than 5 degrees (answer, page 4). Appellants (reply brief, page 3), on the other
hand, point out that the shot size and recess depth alone cannot be relied upon as an
indication of the angle ", as evidenced by the express teaching in Miyasaka of a
concave portion or recess diameter of 0.1 to 5 micrometer, as compared with
appellants’ disclosed minimum recess diameter of 14 micrometers and maximum
recess diameter of 100 micrometers.
In light of the above, even assuming that the teachings with respect to the
particulars of the shot-peening process taught by Miyasaka for a sliding part are
applicable to the rolling element bearing of Mayumi, it is apparent that it would be
necessary to select particular values of the shot diameter, recess depth, recess
diameter, etc. within the broad ranges disclosed by Miyasaka in order to arrive at the
particular angle range recited by appellants. Where prior art references require a
selective combination to render obvious a claimed invention, there must be some
reason for the combination other than hindsight gleaned from the invention disclosure.
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.
Cir. 1985). In this case, especially given the absence of any disclosure in either
Mayumi or Miyasaka of any recognition of the criticality of the angle ", we find no
suggestion in the applied prior art for such a combination. It follows that we cannot
sustain the examiner’s rejection of claim 1 or of claims 2 and 4-6 depending therefrom.
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