Appeal No. 2005-0341 Page 5
Application No. 09/977,409
In the final rejection (pp. 3-4), the examiner (1) set forth the pertinent teachings of
Nikolaus; (2) ascertained1 that Nikolaus fails to show the channel extending completely
around a circumference of the bearing element; and (3) determined that:
lt would have been obvious to modify the limited channel of Nikolaus by
having the channel extend completely around the circumference, since applicant
has not disclosed that having the channel extend completely around the
circumference solves any stated problem or is for any particular purpose and
since applicant disclosed that "(the) oil channel does not have to extend over the
whole circumference'' on page 11, lines 28-29, it appears that the oil distribution
would perform equally well with the channel extended at any length as long as
the channel connects two ports.
The appellants argue that the applied prior art does not suggest extending the
limited channel of Nikolaus completely around the circumference of the bearing
element. We agree. The limitation that the channel extends completely around the
circumference of the bearing element is not suggested by the applied prior art. In that
regard, while Nikolaus does teach a channel which extends partially around the
circumference of the bearing element, Nikolaus does not teach or suggest using a
channel which extends completely around the circumference of the bearing element.
To supply this omission in the teachings of Nikolaus, the examiner made the
determination quoted above that this difference would have been obvious to an artisan.
1After the scope and content of the prior art are determined, the differences
between the prior art and the claims at issue are to be ascertained. Graham v. John
Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966).
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007