Ex Parte ONO et al - Page 6




            Appeal No. 2002-1764                                                          Page 6              
            Application No. 09/359,752                                                                        


            approach involves a single-piece solid rod of, for example, fiberglass and Okada’s                
            approach involves tubular rods formed of wrapped prepreg layers of fiber-reinforced               
            resin.  As such, the combined teachings of Herber and Okada would have led one of                 
            ordinary skill in the art to select one of these approaches and would not, in our opinion,        
            have suggested the combination of a solid core and a surrounding layer or layers of               
            prepreg material.  Cosby does evidence that the concept of a solid steel core                     
            surrounded by layers of different materials was known in the art at the time of                   
            appellants’ invention but provides no teaching or suggestion, either alone or in                  
            combination with Herber and Okada, to use fiber-reinforced resin for such surrounding             
            layers over a steel core.                                                                         
                   For the foregoing reasons, we conclude that the combined teachings of Okada,               
            Herber and Cosby would not have suggested the invention recited in claims 1-3.  The               
            examiner’s rejection of claims 1-3 is thus reversed.                                              
                   The additional teachings of Kusumoto and Hogarth, both of which are directed to            
            tubular shafts without solid cores, do not cure the above-discussed deficiency in the             
            combination of Okada, Herber and Cosby.  It thus follows that the rejections of                   
            independent claim 4, which also calls for a solid rod comprising a solid-state core               
            member and an outer layer formed of fiber reinforced resin, and claims 5-22, which                
            depend from claims 1-4, must also be reversed.                                                    









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