Appeal No. 1996-3777
Application 08/103,915
references is directed to a bearing comprising a race having an integral flange; that Isokawa et al. and
Takada et al. are directed to cold forging; that Muraoka et al.
uses cold-rolling before the hardening step; that Maki et al. is directed to “a method for producing an
outer ring for a uniform motion joint which minimizes forging cracks;” and that the alloy steel
compositions taught by the references are disclosed for such purposes (principal brief, pages 4-5;
supplemental reply brief, pages 2-3). Thus, appellants argue that the claimed bearing is not a “known
product produced by a known process” and that there is no motivation to combine the references in the
manner proposed by the examiner (reply brief, pages 1-2 and 3).
Based on the teaching in the applied references and the admitted prior art set forth in the
specification, we must agree with appellants. It is well settled that in order to establish a prima facie
case of obviousness, “[b]oth the suggestion and the reasonable expectation of success must be found in
the prior art and not in applicant’s disclosure.” In re Vaeck, 947 F.2d 488, 493, 20 USPQ2d 1438,
1442 (Fed. Cir. 1991), citing In re Dow Chemical Co., 837 F.2d 469, 473, 5 USPQ2d 1529,
1531(Fed. Cir. 1988). Thus, a prima facie case of obviousness is established by showing that some
objective teaching or suggestion in the applied prior art taken as a whole and/or knowledge generally
available to one of ordinary skill in the art would have led that person to the claimed invention, including
each and every limitation of the claims, without recourse to the teachings in appellants’ disclosure. See
generally In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d 1443, 1446-47 (Fed. Cir. 1992)
(Nies, J., concurring). This showing can be established on similarity of product or of process between
the claimed invention and the prior art as stated by the court in In re Best, 562 F.2d 1252, 1255, 195
USPQ 430, 433-(CCPA 1977):
Where, as here, the claimed and prior art products are identical or substantially identical, or
are produced by identical or substantially identical processes, the PTO can require an applicant to
prove that the prior art products do not necessarily or inherently possess the characteristics of his
claimed product. See In re Ludtke [441 F.2d 660, 169 USPQ 563 (CCPA 1971)]. [Emphasis
supplied.]
In the record before us, we fail to find either an identical or substantially identical machine
tooled, flanged bearing produced by an identical or substantial identical process. The process of
forming a machine tooled, flanged bearing is known as admitted by appellants in their specification, and
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