Ex parte YOSHINO - Page 5




          Appeal No. 1996-4067                                                        
          Application No. 08/227,686                                                  


               Even if the Japanese abstract described similar                        
          corresponding methodology as required by the claims on appeal,              
          this reference contains no teaching or suggestion of the                    
          formation of a hard nitride layer on the shaft of the                       
          described DC servo motor, much less that a hard nitride layer               
          should be formed only on the journal portion of the shaft by                
          the specific steps required by the appealed claims.  That                   
          shafts for other devices have been selectively nitrided and                 
          that the specific nitriding process utilized by appellant is                
          described in the art  in the Tahara patent is no basis for                  
          combining the teachings of the relied upon references to                    
          arrive at the claimed subject matter.  The examiner’s                       
          statement in the supplemental answer at page 6 that                         
          “[N]itriding just a wear part of a shaft such as a journal                  
          portion is within an ambit” of a person of ordinary skill in                
          the art is simply not an adequate reason to combine the                     
          reference teachings in the manner implicitly proposed.  Thus,               
          the examiner’s stated rejection cannot be sustained.                        
                                                                                     
                                       OTHER ISSUES                                  


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