Appeal No. 2004-0221
Application 09/320,149
in the art, substituting Gerhardt’s oval-shaped aperture for
lubricating a thrust bearing plate for Egger’s structure for
lubricating carriers and holders attached to chain links.
The examiner argues that one of ordinary skill in the art
would have been motivated to substitute one of Gerhard’s oval-
shaped openings for Egger’s plurality of bores to maintain the
required lubricating film thickness between the moving and
stationary surfaces and to increase the efficiency of the chain
(answer, page 7). The examiner, however, provides no evidence
that there is a desirability for replacing Egger’s multiport
structure with another structure to maintain the required
lubricating film thickness or that the use of Gerhardt’s oval-
shaped aperture instead of Egger’s multiport structure would
increase the efficiency of the chain. The examiner has provided
mere speculation, and such speculation is not a sufficient basis
for a prima facie case of obviousness. See In re Warner, 379
F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert. denied, 389
U.S. 1057 (1968); In re Sporck, 301 F.2d 686, 690, 133 USPQ 360,
364 (CCPA 1962).
The examiner argues that the use of one port instead of
several ports is an obvious design choice based upon the
particular lubricant and mating surfaces to be lubricated
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