Appeal No. 2002-0912 Page 5
Application No. 08/913,187
Toshimitsu teaches utilizing a hard carbon film formed on an intermediate layer in a
bearing structure, and it would have been obvious to one of ordinary skill in the art to so
modify the Yamada apparatus (Paper No. 18, pages 2 and 3). The essence of the
arguments made by the appellants in rebuttal is that neither reference suggests that a
hard carbon film be formed on the inner surface of a guide bush, and that such
provides unexpected advantages (Brief, pages 11 and 12).
Yamada, which the examiner applied as the primary reference, was described by
the appellants on pages 1 and 2 of their specification in the context of a guide bush
over which their invention is an improvement. Yamada discloses a guide bush in which
the inner surface is provided with a liner made of heat-resistant and wear resistant
material, such as a super-hard alloy or a ceramic (translation, page 5, lines 3-6). The
reference goes on to point out that if excessive heat is developed in the guide bush
during operation, it becomes burned and the bar (workpiece) moving therein no longer
rotates properly, which can result in the guide bush being damaged (translation, page 5,
lines 20-22). Yamada solves this problem by providing the inner surface of the guide
bush liner, which is in sliding contact with the workpiece, with a plurality of slits through
which lubricating oil is caused to flow between the liner and the workpiece. This
lessens the friction by lubricating the opposed surfaces, reduces heat, and clears away
shavings (translation, pages 6 and 7; Figures 4a and 4b). With regard to the
appellants’ claim 1, Yamada fails to disclose or teach that the inner surface that is in
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