Appeal No. 2001-0573
Application No. 08/638,245
Turning first to the examiner's rejections of claims 1
through 9 and 14 through 17 under 35 U.S.C. § 103 based on
AAPA in view of Scales, and claims 1, 2, 5, 6 and 14 under 35
U.S.C.
§ 103(a) as being unpatentable over Scott in view of Scales,
while it is true that Scales discloses the step of using stop-
off paint (case preventative paint) on selected surfaces of
the bearing section of an earth boring drill bit to protect
such bearing surfaces from carburization (col. 3, lines 31-41)
and specifically mentions that sharp corners should not have
high surface carbon so as to minimize the generation of
fatigue cracks, we share appellants' position that this
teaching must be viewed in the context of the disclosure of
the Scales patent's focus on the steel bearing surfaces of the
journal (13) therein and not as being a teaching of general
applicability to any sharp corner on an earth boring drill bit
no matter where it may be located. Although Scales' earth
boring drill bit includes a cone-shaped cutter (15) having
teeth (17), nothing in Scales mentions or specifically
suggests the use of stop-off paint on the cutter or on the
teeth of the cutter. Thus, contrary to the examiner's
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