Appeal No. 1996-3777
Application 08/103,915
change the character of the alloy steel. In re Sebek, 465 F.2d 904, 907, 175 USPQ 93, 95 (CCPA
1972).
We find that Isokawa et al. (e.g., page 2), Takada et al. (e.g., page 2) and Maki et al. (e.g.,
page 2) disclose alloy steels having compositions which at least overlap with the specified composition
for the alloy steel in appealed claim 1. However, the examiner has provided no evidence or scientific
reasons on this record establishing that one of ordinary skill in this art would have used the cold forging
alloy steels of Isokawa et al. and Takada et al. in the hot forging process to make a flanged bearing
acknowledged in appellants’ specification, even though he states that these references do not disclose a
hot forging process. Indeed, we find in this respect that both Isokawa et al. (pages 3-4) and Takada et
al.(pages 3-4) teach that “cold forging” is preferable to “hot forging” and specifically disclose alloy
steels for “cold forging.” With respect to working such alloy steels, Maki et al. suggests that the alloy
steels disclosed by Isokawa et al. and Takada et al. address in a limited manner the problems
encountered in the hot or cold forging involved in alloy steel molding processes wherein “the useful life
of a punch and cracks on the material becomes more serious issues” (e.g., page 4; see also, e.g., pages
3, 5-6, 8 and 16). Thus, Maki et al. discloses alloy steels that are said to improve cold or hot molding
and the useful life of a “punch” in the hot or cold forging involved with extrusion and continuous swaging
in the molding process. While the examiner included Maki et al. in his statement that none of the cited
references disclose hot forging, this reference does disclose that hot forging can be used to work the
disclosed alloy steel in the molding process. However, having taken the position that hot forging is not
disclosed in this reference, the examiner has presented no evidence or scientific reasons on this record
establishing that one of ordinary skill in this art would have used the alloy steels of Maki et al. in the
prior art hot forging process with the reasonable expectation of making a flanged bearing.
Accordingly, it is manifest that the only direction to appellants’ claimed invention as a whole on
the record before us is supplied by appellants’ own specification. Vaeck, supra.
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