Appeal No. 1996-3777
Application 08/103,915
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the rejection of claims 1 and 3 under 35 U.S.C § 103 over Muraoka et al. or JP60-230960
(hereinafter Isokawa et al.) or JP63-216952 (hereinafter Takada et al.) or JP02-290640 (hereinafter
Maki et al.) in view of the admitted prior art at page 1, lines 7-16 of the appellants’ specification
(answer, pages 3-4).3
We find that appealed claim 1 encompasses a bearing comprising an inner or outer race as
defined in a product-by-process format, wherein (1) at least one inner or outer race is made of an alloy
steel consisting essentially of the specified amounts of C, Si, Mn, Cr and optionally B, the balance being
Fe, (2) a flange that is to be machine tooled is integrally formed with at least one of the inner and outer
races by hot forging and cooling to room temperature to a maximum hardness of less than Hv 230; and
(3) after the flange has been machine tooled, at least a race track of one of said inner and outer races,
having either a rolling groove or sliding region, is subjected to a hardening treatment to a hardness of at
least Hv 653. See generally, In re Bridgeford, 357 F.2d 679, 682-83, 149 USPQ 55, 57-58
(CCPA 1966).
According to the examiner, the references evince that “the instant alloy steel for rolling-parts
are known in the art,” and that while the references do not disclose the rolling-part fabrication steps
such as hot forging and drilling, these steps are also known in the same art as seen from appellants’
specification (answer, pages 3-4). Thus, the examiner concludes that “a product produced by a
known rolling-parts alloy steel with a known method . . . is unpatentable over the” prior art
bearings and that because the prior art discloses a substantially similar product, the burden of proof
has shifted to appellants to establish that their product is patentably distinct (answer, page 4; emphasis
supplied). The examiner points out that “the instant claimed ‘integral flange’ reads on the non-
hardened parts of a bearing race” such as non-flange parts of the rolling-part structures shown in
Muraoka et al (supplemental examiner’s answer, pages 1-2). Appellants submit that none of the
3The references relied on by the examiner with respect to the ground of rejection are listed at page 2
of the answer. We refer in our opinion to the translations of each of Isokawa et al., Takada et al. and
Maki et al. prepared for the PTO by FLS, Inc. in September 1996, a copy of which is attached to this
decision.
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