Ex Parte Boulton et al - Page 6




         Appeal No. 2004-0531                                                       
         Application 09/871/126                                                     


         expressly addresses the no maintenance advantage of dry bearings           
         over bearings requiring periodic lubrication maintenance (column           
         1, lines 22 through 52).  For these reasons, we sustain the                
         obviousness rejection of claim 1.  As indicated (footnote 4), the          
         claimed feature of the self-lubricating member having a thickness          
         of up to 2mm would have been suggested by the prior art.  Thus,            
         we also sustain the rejection of claim 7.                                  


              The argument of appellants fails to persuade this panel of            
         the Board that the content of claims 1 and 7 is patentable under           
         35 U.S.C. § 103(a).  Contrary to the point of view advocated by            
         appellants (brief, pages 4 and 7), there is a basis or suggestion          
         in the art for combining or modifying the references, as                   
         articulated above.  Further, we explained above that appellants            
         have acknowledged the problem in the art (specification, page 1)           
         of pendulum armed machines (Hickman and Hart) at the time of the           
         present invention.  Thus, from our perspective, to one having              
         ordinary skill in the art when appellants’ invention was made,             
         there was a suggestion in the art of the problem, contrary to              
         appellants’ point of view (brief, page 5).  Clearly, the Adinoff           
         reference is appropriate and analogous prior art since it is               
         reasonably pertinent to the particular lubrication and bearing             

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