Appeal No. 2000-0584
Application No. 08/845,673
II. The 35 U.S.C. § 103(a) rejection of claims 54 and 59 as being
unpatentable over the German reference
Claims 54 and 59 depend ultimately from claim 51 and require
the radial thickness of the annular module to be 3 to 10 mm
(claim 54) and the maximum radial thickness of the abrasive
coating to be 3 mm (claim 59). The examiner’s conclusion (see
page 3 in the final rejection) that these parameters would have
been obvious matters of design is reasonable on its face given
the German reference’s stated desire for a strong abrasive layer
6 and a relatively small cross-sectional area of ring 8 as
compared with bearing section 9. Moreover, where the difference
between a claimed invention and the prior art is some range or
other variable within the claims, an applicant must show that the
claimed range or variable is critical, generally by showing that
such achieves unexpected results relative to the prior
art. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934,
1936-37 (Fed. Cir. 1990). The appellant has made no such
showing.
Therefore, we shall sustain the standing 35 U.S.C. § 103(a)
rejection of claims 54 and 59 as being unpatentable over the
German reference.
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