Appeal No. 2005-1543 4
Application No. 09/907,462
Appellant calls into question the Examiner’s finding of a suggestion to make the
combination. Specifically, Appellant argues that “nothing in the references suggests the
need for a nitrided M50 for the planetary gear shaft” of Quenneville. (Brief, p. 5). In
support of this argument Appellant asserts that there are differences between the
teachings of the two references which translate to a lack of motivation to make the
combination (Brief, p. 6). Specifically, according to Appellant, Dodd teaches use of the
bearing assembly in aircraft engines whereas Quenneville is directed to a bearing
assembly in an aircraft engine starter (Brief, p. 6). Appellant also asserts that Dodd
addresses conventional bearing arrangements and does not disclose or suggest using
a shaft as part of a bearing assembly (Brief, p. 6). Appellant also argues that the art
does not teach or suggest the use of the nitrided material in the location claimed and,
therefore, the cited references cannot render the Appellant’s invention obvious. (Brief,
pp. 6-7).
Appellant’s arguments overlook the key similarity between the two teachings:
both references are directed to rolling-element bearing components. Quenneville
describes a specific rolling-element bearing assembly including “a central support shaft
34 rotatably supported via bearing means 36, for example roller bearings, on a
stationary shaft 33.” (Quenneville, col. 6, ll. 24-27). Quenneville is silent as to the
material of manufacture, therefore, one of ordinary skill in the art would have looked to
disclosures of conventionally used materials. Dodd is directed to a high hardness
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