Ex parte HARADA et al. - Page 6




                   Appeal No. 2001-2377                                                                                               Page 6                        
                   Application No. 08/967,023                                                                                                                       


                   (column 2, lines 1-50; Figure 4).  It therefore is our view that Oyanagi explicitly would have                                                   
                   suggested to one of ordinary skill in the art that the oil grooves of Nakagomi which do not                                                      
                   extend entirely through the lining be manufactured by pressing.  The inherent result of such                                                     
                   a process would be that the upper corner portions of the groove be curved surfaces, as                                                           
                   shown in Figure 4.                                                                                                                               
                            Concerning the appellants’ argument that Oyanagi is nonanalogous art (Brief,                                                            
                   pages 5 and 6), we are of the opinion that, at the very least, Oyanagi would have                                                                
                   commended itself to the attention of an inventor who was attempting to solve the problem                                                         
                                                                                                                                         4                          
                   of controlling oil retention between friction surfaces, and therefore is analogous art.   In this                                                
                   regard, we point out that although Oyanagi is dealing with synchronizer rings in meshing                                                         
                   type transmissions, the problem to which the invention is directed is analogous to the                                                           
                   problem attacked by both the appellant and Nakagomi.  To the extent that the arguments in                                                        
                   the Brief are intended to express the opinion that there would have been no suggestion to                                                        
                   combine the references, we point out that such would not apply to claim 1, where it is our                                                       



                            4The test for analogous art is first whether the art is within the field of the inventor's                                              
                   endeavor and, if not, whether it is reasonably pertinent to the problem with which the                                                           
                   inventor was involved.  See In re Wood, 599 F.2d 1032, 1036, 202 USPQ 171, 174                                                                   
                   (CCPA 1979).  A reference is reasonably pertinent if, even though it may be in a different                                                       
                   field of endeavor, it logically would have commended itself to an inventor's attention in                                                        
                   considering his problem because of the matter with which it deals.  See In re Clay, 966                                                          
                   F.2d 656, 659, 23 USPQ2d 1058, 1061 (Fed. Cir. 1992).                                                                                            








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