Ex Parte Telakowski - Page 5




            Appeal No. 2005-1543                                                              5              
            Application No. 09/907,462                                                                       


            material useful in rolling-element bearing components.  Dodd places no particular                
            limitations on the components that can be made using the material of Dodd and                    
            components such as inner and outer bearing rings are specifically mentioned (Dodd,               
            claim 6).  An inner ring of a bearing component is analogous in function to the shaft of         
            Quenneville as both support bearing elements such as roller bearings.  That                      
            Quenneville describes a bearing assembly, is silent with respect to the material of              
            manufacture, and Dodd describes a material not only suitable for bearing assemblies              
            but which has improved properties is strong evidence in support of a finding of a                
            suggestion to combine.  Nor can we agree that there is a difference in intended use              
            environment that would dissuade one of ordinary skill in the art from using the nitrided         
            material in the bearing assembly of Quenneville.  Dodd simply discloses that “[r]olling          
            element bearing components for use in aircraft engines in particular are made from               
            M50, M50 NiL and Pyrowear 675 steels.” (Dodd. p. 1, ll. 16-17).  That disclosure does            
            not somehow teach away from the use of M50 steel in aircraft engine starters, it merely          
            states one well known use.  Nor does Dodd teach away from use in bearing assemblies              
            of the Quenneville construction.  Dodd is directed to rolling-element bearing                    
            components in general without restriction.                                                       
                   Appellant further argues that “[o]ne of ordinary skill in the art would not take the      
            shaft of Quenneville and nitride the shaft or use an M50 alloy because nitriding and             
            using M50 alloys is very expensive and time-consuming.” (Reply Brief, p. 1).  This               








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