Appeal No. 2001-0573
Application No. 08/638,245
teeth are, we agree with appellants' position as set forth in
the reply brief (pages 3-6).
As we see it, there is no evidence relied upon by the
examiner that one of ordinary skill in the art would have
recognized the particular problem or problem area confronted
by appellants and therefore nothing to suggest solving such a
problem in the particular manner claimed by appellants, even
though the use of stop-off or case preventative paints was
generally known in the art to inhibit or prevent carburization
of surfaces and/or sharp corners on other drill bit
structures, i.e., like the head section (11) and bearing
journal (13) of Scales. In our opinion, the examiner has
inappropriately employed appellants' discussion of their
discovery of the source of the problem as a teaching for the
proposed modification of both AAPA and Scott. That is, in
searching for an incentive for modifying the prior art
cutters, the examiner has impermissibly drawn from appellants'
own teachings regarding the deficiencies of the prior art
cutters. In this regard, it is clear that the examiner has
fallen victim to what our reviewing Court has called "the
7
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