Ex parte KANAZAWA et al. - Page 7




          Appeal No. 96-2404                                                          
          Application No. 08/112,446                                                  

          examiner and contrary to the appellants’ argument, the UK                   
          reference explicitly discloses a rotary device in Figure 7                  
          (also see lines 107 through 122 on page 2) which forms a                    
          groove that is shaped like a ring.  From our perspective, this              
          disclosure of the UK reference satisfies the claim 15                       
          requirement of a rotary cutter used to form a ring-like                     
          groove.  With respect to claim 16 which requires use of a                   
          punching tool as well as a rotary cutter for forming the first              
          and second recesses, it is significant in our view that the UK              
          reference teaches forming recesses with rotary devices as                   
          explained above and with punching tools (e.g., see Figure 1                 
          and lines 38 through 50 on page 2).  While the UK reference                 
          does not expressly teach using the punching and rotary devices              
          in combination for forming first and second recesses                        
          respectively, one with ordinary skill in the art would have                 
          found it obvious to use these devices in combination so as to               
          thereby form a respective recess via the more advantageous                  
          tool.  Thus, for example, it would have been obvious to use                 
          the punching device of the UK reference as a more advantageous              
          tool for forming a first recess and to use the rotary device                



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