Appeal No. 1998-1650 Page 10
Application No. 08/715,749
After the scope and content of the prior art are
determined, the differences between the prior art and the
claims at issue are to be ascertained. Graham v. John Deere
Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Based on our analysis and review of Wendel and the
independent claims on appeal (i.e., claims 24 and 25), it is
our opinion that the only difference is the limitation
concerning the step of forming grooves in the bearing surface
part (claim 24) or the bearing surface (claim 25) simultaneous
with steps of
(1) deforming/obtaining the bearing surface part/bearing
surface into the second/finished shape; and (2) affixing the
bearing surface part within the bearing member or securing the
mass of ductile material in the bearing part.
With regard to this difference, the examiner determined
(nonfinal Office action, pp. 2-3) that
[i]t would have been obvious to one of ordinary skill in
the art at the time the invention was made to press
grooves, as shown by Murray, in the bearing surface
formed by Wendel following the teaching of Murray that a
grooved bearing surface improves lubrication, and further
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