Appeal 2006-3018
Application 10/657,397
following limitation in terms of structure: “wherein the split portion
contains a slot so that the split portion is flexible in a radial direction.” We
determine that this limitation further requires that the material in this portion
must be capable of being “flexible in a radial direction,” and indeed, the
specification discloses to one skilled in the art that this portion can be made
of “spring like resilient material” (specification 7:8-18). This structure and
material is further limited by the clause “when the wear sleeve is in the
central bore, the external surface of the split portion is biased in a radial
outward direction against the central bore of the bit holder so as to retain the
wear sleeve in the central bore of the bit holder.” Thus, the material of the
split portion must be capable of being “flexible in a radial direction” and
“biased in a radial outward direction.”
Appellant correctly points out in the Reply Brief that Peterson does
not disclose to one skilled in this art, either expressly or inherently, that as a
matter of fact the portion of sleeve 35 having slots 51 for roll pin 49 is made
of material that provides the claimed characteristics of the material in the
split portion of the wear sleeve in claim 1 (Peterson col. 3, l. 65, to col. 4,
l. 41, and FIG. 4). These claim requirements are not addressed by mere
structure alone.
Accordingly, in the absence of a prima facie case of anticipation
which addresses all of the claim limitations, we reverse the ground of
rejection of appealed claims 22 through 25 under 35 U.S.C. § 102(b).
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Last modified: November 3, 2007