Ex parte TSUKADA - Page 8




                 Appeal No. 1999-2755                                                                                                                   
                 Application No. 08/599,105                                                                                                             


                 a sublimination solid prior to electrodeposition (id. at 51-                                                                           
                 53) or with a silicon rubber plug molded to fit within the                                                                             
                 threaded bore of the nut (col. 6, ll. 4-21).                                                                                           
                          In applying the test for obviousness,  this panel of the          4                                                           
                 Board determines that it would have been obvious at the time                                                                           
                 the invention was made to one having ordinary skill in the                                                                             
                 art, from a collective assessment of the applied teachings, to                                                                         
                 fit a protective member to the surface of the groove formed in                                                                         
                 the slider body of the AAPA prior to rust-proofing following,                                                                          
                 for example, the teaching of Takahashi.  In our opinion, the                                                                           
                 incentive on the part of one having ordinary skill in the art                                                                          
                 for making this modification would have simply been to gain                                                                            
                 the art recognized benefit of the masking step, as readily                                                                             
                 discerned from a review of the teachings of Takahashi.                                                                                 
                 Takahashi makes it apparent to us that one of the purposes of                                                                          
                 masking a surface prior to electrodeposition is to prevent the                                                                         
                 coating particles in an electrodeposition bath from adhering                                                                           


                          4The test for obviousness is what the combined teachings                                                                      
                 of references would have suggested to one of ordinary skill in                                                                         
                 the art.  See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,                                                                          
                 1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208                                                                         
                 USPQ 871, 881 (CCPA 1981).                                                                                                             
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