Appeal No. 2001-2377 Page 5
Application No. 08/967,023
Nakagomi thus discloses or teaches all of the subject matter recited in independent claim
2
1 and, in fact, anticipates the claim.
3
Anticipation being the epitome of obviousness , we will sustain the rejection of
claim 1 on the basis of Nakagomi. Since the appellants have elected to group dependent
claims 2 and 3 with claim 1 (Brief, page 3), we also shall sustain the standing rejection of
these two claims. However, because our reasoning differs from that set out by the
examiner, we deem our affirmance to be a new rejection under 37 CFR 1.196(b).
In the interest of judicial economy, we wish to comment on the Oyanagi patent,
which discloses friction bands in vehicle transmissions having oil retaining grooves that do
not extend completely through the friction material (see Figures 3 and 4). Oyanagi
explains that forming the oil grooves by the process of cutting results in a shape that is not
stable, has abnormalities in cross-sectional shape, and can cause the frictional material to
be discontinuous (see column 1, lines 49-57 and Figure 3). To overcome these problems,
this reference teaches that it is desirable to form the oil grooves in the frictional material of
a friction band by pressing, which results in a groove terminating in the lining material
2Anticipation is established when a single prior art reference discloses, either
expressly or under the principles of inherency, each and every element of the claimed
invention. See In re Paulsen, 30 F.3d 1475, 1480-1481, 31 USPQ2d 1671, 1675 (Fed.
Cir. 1994) and In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990).
3In re Fracalossi, 681 F.2d 792, 794, 215 USPQ 569, 571 (CCPA 1982).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007