Appeal No. 1996-3777
Application 08/103,915
appellants do not dispute that the process steps recited in appealed claim 1 are known in the art.
However, the examiner has admitted that the “references do not disclose the rolling-parts fabrication
steps such as hot forging and drilling” or a flanged bearing (answer, sentence bridging pages 3-4). With
respect to a flanged bearing, we note that the examiner contends that “the instant claimed ‘integral
flange’ reads on the non-hardened parts of a bearing race,” pointing to two figures of Muraoka et al.
(supplemental answer, paragraph bridging pages 1-2). However, it is clear from appellants’
specification as it would be interpreted by one of ordinary skill in this art that the term “flange” as used
in appealed claim 1 has its ordinary meaning and encompasses the configuration shown in specification
Figs. 1 and 2. In re Morris, 127 F.3d 1048, 1053-56, 44 USPQ2d 1023, 1027-30 (Fed. Cir. 1997);
In re Zletz, 893 F.2d 319, 321-22, 13 USPQ2d 1320, 1322 (Fed. Cir. 1989). Thus, the product of
Muraoka et al. is not the product of the appealed claims.
Accordingly, the dispositive issue in this appeal is whether one of ordinary skill in this art would
have employed the alloy steels having the composition shown in Muraoka et al., Isokawa et al., Takada
et al. or Maki et al. in the known hot forging process for preparing a machine tooled, flanged bearing
with the reasonable expectation of preparing the bearing specified in appealed claim 1. Vaeck, supra.
Upon review, we find no teaching or suggestion in Muraoka et al., Isokawa et al., Takada et al. and
Maki et al., separately or combined, which would have motivated one of ordinary skill in this art to use
the alloy steels taught in any of these references in a process which uses hot forging to obtain a
machined tooled bearing having a flange integrally formed with a race as specified in appealed claim 1.
With respect to Muraoka et al. (e.g., col. 2, lines 11-40, and col. 6, line 59, to col. 7, line 4), we find
that the examiner has not explained why one of ordinary skill in this art would have modified the alloy
steel composition of Muraoka et al. by adjusting the silicon content thereof, which is a maximum of
0.04% by weight, to at least the lowest amount of silicon in the composition specified in appealed claim
1, that is, 0.07% by weight, and then use that alloy steel in a hot forging process when Muraoka et al.
teaches a process that involves cold-rolling (answer, sentence bridging pages 4-5, and supplemental
answer, paragraph bridging pages 2-3). Indeed, it is apparent from Muraoka et al. and the other
references that small changes in one of the ingredients of the alloy steel composition can materially
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