Ex Parte MIYA et al - Page 7




             Appeal No. 2002-0912                                                              Page 7                
             Application No. 08/913,187                                                                              


                    manner, the hydrogenated amorphous carbon film well adheres to the                               
                    sliding surfaces” (column 13, lines 2-15, emphasis added).                                       
             Thus, Toshimitsu teaches that the anti-friction characteristics of a bearing having a                   
             metal sliding surface are improved by coating the metallic surface with a hydrogenated                  
             amorphous film, and that the adherence of this film to the metallic surface is enhanced                 
             by forming it upon an intermediate layer of ceramic material.                                           
                   It therefore is our view that one of ordinary skill in the art would have found it               
             obvious to modify the Yamada guide bush by providing the metallic inner surface with a                  
             coating of hard carbon film formed on an intermediate layer of ceramic material which                   
             has been formed on the metallic inner surface.  Explicit suggestion for this modification               
             is found in Toshimitsu’s teaching that this improves the adherence of the hard carbon                   
             film to the metallic inner surface.  This being the case, the combined teachings of                     
             Yamada and Toshimitsu establish a prima facie case of obviousness with regard to the                    
             subject matter recited in claim 1, and we will sustain the rejection.  Claims 4 and 5 also              
             stand rejected on the basis of Yamada and Toshimitsu, and since the appellants                          
             have elected to group them with claim 1 (Brief, page 10), the rejection of these claims                 
             also is sustained.                                                                                      
                    In the course of arriving at this conclusion, we carefully considered the                        
             appellants’ arguments.  As we stated above, explicit suggestion exists for making the                   
             modification to Yamada proposed by the examiner.  Once having been modified, the                        
             advantages that accrue to the Yamada guide bush are the same as those attributed to                     







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