Ex parte HATTORI - Page 7




               Appeal No. 1999-1721                                                                           Page 7                 
               Application No. 08/734,125                                                                                            


                       Turning next to the examiner's rejection of claim 8 under 35 U.S.C.  103 as being                            
               unpatentable over Hara in view of AAPA, our discussion supra with regard to the recited                               
               raceway diameter in claim 7 applies equally to claim 8.  Accordingly, we conclude that the                            
               subject matter of claim 8 is anticipated by Hara.  A disclosure that anticipates under 35 U.S.C.                      
                102 also renders the claim unpatentable under 35 U.S.C.  103, for "anticipation is the                             
               epitome of obviousness."  Jones v. Hardy, 727 F.2d 1524, 1529, 220 USPQ 1021, 1025 (Fed.                              
               Cir. 1984).  See also In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982);                             
               In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974).  Thus, we sustain the                              
               examiner's rejection of appealed claim 8 under 35 U.S.C.  103.                                                       
                                               NEW GROUND OF REJECTION                                                               
                       Pursuant to the provisions of 37 CFR  1.196(b), we enter the following new ground of                         
               rejection.                                                                                                            
                       Claim 6 is rejected under 35 U.S.C.  103 as being unpatentable over Hara.                                    
                       As discussed above, it is our opinion that Hara's rail anticipates the limitations of claim                   
               2.  Our discussion with regard to these limitations is equally applicable with regard to claim 6,                     
               which depends from claim 2, and is incorporated herein.  Appellant's claim 6 further recites                          
               that the material of the ball holder is "a metal."  While Hara does not disclose, expressly or                        
               under the principles of inherency, that the track rails (2) are made of metal, the rails (2) as                       











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