Ex parte WARNER et al. - Page 11




          Appeal No. 1998-1807                                                        
          Application No. 08/090,770                                                  


          rejected under 35 U.S.C. § 103 as being unpatentable over                   
          Wiand alone or in combination with Pieper.                                  
               With respect to the rejection based on Wiand alone, it is              
          the examiner’s position that all of the elements of claim 1                 
          are found in Wiand and that the features of dependent claims 2              
          through 14, 20, 21 and 26 through 32 are either well known in               
          the art or matters of design choice (Answer, pages 5 and 6).                
          For the                                                                     
          reason set forth above, we have determined that each and every              
          element of claim 1 is not found in Wiand.  Our review of the                
          reference further reveals that there is no suggestion of using              
          the method disclosed therein to make a plateau honing tool                  
          having                                                                      




          an elongated mounting base and a somewhat smaller elongated                 
          projecting section which terminates in an elongated working                 
          face of the tool.                                                           
               In order to establish the prima facie obviousness of a                 
          claimed invention, all the claim limitations must be taught or              
          suggested by the prior art.  In re Royka, 490 F.2d 981, 985,                
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