Ex parte RAO et al. - Page 14




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


                 would have been obvious to one of ordinary skill in the art at                                                                         
                 the time of the appellants' invention to utilize the solid                                                                             
                 film lubricant of Rao  (which impregnates the surface) for the8                                                                                                
                 solid film lubricant on the outer surfaces of the cam and the                                                                          
                 tappet to further decrease friction.                                                                                                   


                          The arguments advanced by the appellants (brief, pp. 14-                                                                      
                 18 and reply brief, pp. 3-4) do not persuade us that claim 1                                                                           
                 is unobvious over the applied prior art for the following                                                                              
                 reasons.  First, as to the appellants arguments regarding the                                                                          
                 deficiencies of each reference on an individual basis, we note                                                                         
                 that nonobviousness cannot be established by attacking the                                                                             
                 references individually when the rejection is predicated upon                                                                          
                 a combination of prior art disclosures.  See In re Merck & Co.                                                                         
                 Inc., 800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986).                                                                         
                 Lastly, the appellants argue that there is no suggestion to                                                                            


                          8Particularly since the solid film lubricant disclosed by                                                                     
                 Rao is basically the same as the solid film lubricant                                                                                  
                 disclosed by the appellants, there is a reasonable basis to                                                                            
                 conclude that the solid film lubricant 35 of Rao is inherently                                                                         
                 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.                                                                                                    
                                                                          14                                                                            





Page:  Previous  7  8  9  10  11  12  13  14  15  16  17  18  19  20  21  Next 

Last modified: November 3, 2007