Appeal No. 2003-1303 7
Application No. 09/351,166
the influence of mechanical play is substantially eliminated as a result thereof, which
result is not taught by Hakala.
Based on our reading of the disclosure of Hakala (e.g., col. 1, lines 30-36; col. 2,
lines 49-60), appellants’ explanation as to how the drilling apparatus of Hakala operates
is reasonable. Moreover, the examiner has not disputed appellants’ position that the
drilling forces in Hakala would essentially be directed in the radial direction of the
cylinders. On the record before us, the examiner has proffered no technical or scientific
reasoning whatsoever as to why the drilling operation of Hakala would result in a
tangential force being exerted on cylinder s2. Further, while we appreciate that
Hakala’s drilling apparatus may exert a tangential force on cylinder s2 due to its weight,
we are in agreement with appellants that this alone would not be sufficient to meet the
terms of independent claims 1, 6 and 8, which, as pointed out by appellants, in effect
require the tangential force to be such that it substantially eliminates the influence of
mechanical play due to the supporting structures of the adjacent cylinder. Simply put,
Hakala does not disclose, either expressly or under the principles of inherency, any
tangential force being exerted on adjacent cylinder s2 to substantially eliminate the
influence of mechanical play due of the support structures of the adjacent cylinder, as
claimed in independent claims 1, 6 and 8.
For these reasons, we shall not sustain the examiner’s rejection of claims 1-3, 5,
6, 8 and 9 as being anticipated by Hakala.
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