Ex parte HATTORI - Page 8




               Appeal No. 1999-1721                                                                           Page 8                 
               Application No. 08/734,125                                                                                            


               illustrated in Figures 3-11 appear from the cross-hatching thereof to be made of metal .   4                          

               Moreover, Hara discloses (column 1, lines 7-21) that the linear motion rolling guide unit of the                      
               invention is applicable to sliding portions of "machining tools, precision processing equipment                       
               and testing equipment" and is such that "a relatively heavy equipment is mounted on a slider"                         
               which is moved backward and forward on the track rails.  In view of this disclosure, it would                         
               have been obvious to one of ordinary skill in the art to select a very strong and rigid material,                     
               such as a metal, for the track rails to bear the weight of the equipment moved thereon.   This5                         

               accords with the general principle that the selection of a known material based upon its                              
               suitability for the intended use is a design consideration within the skill of the art.  In re Leshin,                
               227 F.2d 197, 199, 125 USPQ 416, 418 (CCPA 1960).                                                                     
                                                          CONCLUSION                                                                 
                       To summarize, the decision of the examiner to reject claims 2, 3, 6, 7, 35 and 37 under                       
               35 U.S.C.  102 and claim 8 under 35 U.S.C.  103 is affirmed as to claims 2, 3 and 7 and                             
               reversed as to claims 6, 35 and 37.  A new rejection of claim 6 is entered pursuant to the                            
               provisions of 37 CFR  1.196(b).                                                                                      



                       4See Manual of Patent Examining Procedure (MPEP)  608.02, page 600-84 (Seventh Edition, July 1998).          
                       5An artisan must be presumed to know something about the art apart from what the references disclose (see     
               In re Jacoby, 309 F.2d 513, 516, 135 USPQ 317, 319 (CCPA 1962)) and the conclusion of obviousness may be made         
               from "common knowledge and common sense" of the person of ordinary skill in the art (see In re Bozek, 416 F.2d        
               1385, 1390, 163 USPQ 545, 549 (CCPA 1969)).  Moreover, skill is presumed on the part of those practicing in the       
               art.  See In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).                                        







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