Ex parte ITO et al. - Page 9




          Appeal No. 97-1156                                                          
          Application 08/192,270                                                      


          addressed to a ceramic-metal composite assembly, to be antici-              
          pated by the assembly shown in Figure 6 of Oda (main answer,                
          pages 5 and 6).                                                             

               We disagree with this conclusion.  As we see it, the                   
          engine piston of Figure 6 of Oda clearly includes two                       
          mechanical joining structures, not the specific metallurgical               
          joining structure and the  mechanical joining structure                     
          encompassed by the claims. Under the present circumstances, it              
          is evident to us that one versed in this art would not have                 
          fairly understood the term “press fitting” as inherently                    
          teaching a metallurgical joining process, as asserted by the                
          examiner.  In other words, the teaching of “press fitting”                  
          does makes certain, without question, that a metallurgical                  
          joining process is, in fact, an inherent characteristic of the              
          Oda engine piston.                                                          

                         The rejections based upon Ito ‘085                           
                          under 35 U.S.C. §§ 102(e) and 103                           

               We reverse the respective rejections of claims 30 through              
          34 and 37 through 48 under 35 U.S.C. § 102(e) as being                      

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