Appeal No. 2003-1732 Page 6
Application No. 09/646,703
lever arm of the load acting thereon (column 2, lines 3-11). Thus, one of the features of
the Doerre invention that overcomes the stated problem in the prior art is the providing
of a coating of lesser resistance than the base component on the metallic first
component, so that it reacts in a particular manner during the course of being press fit
with the ceramic second component. In the absence of evidence to the contrary
adduced by the examiner that reversing the parts would not destroy this objective, it is
our view that the examiner’s proposed change does not amount to “mere” reversal of
working parts and thus the artisan would not have been motivated to do so.
Furthermore, Doerre teaches that the coating on the metallic first component be
“a suitable metal alloy” (column 2, line 42) which provides the necessary “increased
deformability of just the surface layer” (column 2, lines 12 and 13). In order for the
examiner’s theory to result in the coating required by the appellants’ claims, this metallic
coating would have to be placed on the ceramic second component, and it would have
to be roughened. However, it must be noted that the extent of Doerre’s teaching
regarding the surface of the metallic first component is that it be grooved, or heat
treated to make a porous surface region, or provided with a soft and flexible coating.
Doerre does not teach that when the flexible coating alternative is chosen it also be
roughened. Therefore, even if, arguendo, suggestion existed for taking the coating
from the surface of the metallic first component and installing it on the surface of the
ceramic second component, the result at best would be a metallic coating that is soft
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