Ex parte RAO et al. - Page 13




          Appeal No. 96-3202                                                          
          Application No. 08/183,464                                                  


          claims at issue are to be ascertained.  Graham v. John Deere                
          Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).                           


              The differences between Shiraya and claim 1 are the                    
          limitations that (1) the cam is mounted on a cam shaft, (2) a               
          solid film lubricant is impregnated and anchored in the                     
          porosity of the outer surface of the cam, and (3) the solid                 
          film lubricant on the outer surfaces of the cam and the tappet              
          being stable to temperatures at about 700°F. to retain a low                
          coefficient of friction and promote rapid formation of a                    
          stable oil film to reduce friction.                                         


               In applying the above noted test for obviousness, we                   
          reach the conclusion that it would have been obvious to one of              
          ordinary skill in the art at the time of the appellants'                    
          invention to                                                                
          mount Shiraya's cam on a cam shaft and to provide the outer                 
          surface of the cam with a solid film lubricant in order to                  
          achieve excellent wear-resisting and friction-resisting                     
          performance even at high temperature with dry conditions in                 
          which engines are used as suggested by Oda.  Additionally, it               
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