Appeal No. 1998-0331
Application No. 08/297,257
machine. See brief, p. 7. Thus, the appellants assert that6
there is no teaching or suggestion in Acme, DT '799 or Burka
of two roller bearings mounted in spaced apart stepped
portions in a base and disposed between the base and a spindle
carrier for supporting the spindle carrier wherein at least
one of the roller bearings includes a plurality of tapered
rollers. See brief, pp. 7 and 10.
Initially, we observe that the mere fact that the tapered
roller bearings shown as supporting the spindle 1 in DT '799
could be substituted for one or both of the wide spindle
carrier journals in the multiple spindle bar machine disclosed
by the Acme reference would not have made the modification
obvious unless the prior art suggested the desirability of
doing so. See In re Mills, 916 F.2d 680, 682, 16 USPQ2d 1430,
1432 (Fed. Cir. 1990); In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). Citing references which
merely indicate that isolated elements and/or features recited
in the claims are known is not a sufficient basis for
concluding that the combination of claimed elements would have
6We note that Acme teaches tapered roller bearings
supporting an individual spindle, not a spindle carrier, in a
multiple spindle bar machine. See Figs. C-3 and C-4.
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