Appeal No. 2003-0083 7
Application No. 09/691,532
lubricating fluid to prevent such particles from causing excessive wear to the wheel
bearings (Frehse, col. 1, lines 14-38) would have provided ample suggestion for this
modification.
As to appellant’s arguments, it appears that they are based on the view that claims
requires the “magnetic portion” to be a part of the axle end plug. However, no such
limitation appears in claim 1. Thus, appellant’s arguments fails at the outset with respect
to claim 1. In re Self, 671 F.2d 1344, 1348, 213 USPQ 1, 5 (CCPA 1982). Moreover,
while appellant argues (main brief, page 4) that incorporating a magnetic rod into Ehrlich’s
wheel axle assembly in accordance with the teachings of Frehse “would ruin the benefit of
Ehrlich,” we again note that all of the features of the secondary reference need not be
bodily incorporated into the secondary reference (In re Keller, 642 F.2d at 425, 208 USPQ
at 881). Additionally, the artisan is not compelled to blindly follow the teachings of one
prior art reference over the other without the exercise of independent judgement (Lear
Siegler, Inc. v. Aeroquip Corp., 733 F.2d 881, 889, 221 USPQ 1025, 1032 (Fed. Cir.
1984)). Here, we consider that the secondary reference to Frehse broadly teaches
incorporating a magnetic element into the wheel axle assembly to collect ferrous metallic
particles in the lubricating oil of the bearings. In providing this feature in Ehrlich the skilled
artisan would not do so in a way that would make Ehrlich’s valve unsuitable for its
intended purpose, as urged by appellant. After all, it is skill in the art, rather than the
converse, that we are to presume. In re Sovish, 769 F.2d 738, 742, 226 USPQ 771, 774
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007