Appeal No. 2006-0833
Application No. 10/297,832
OPINION
In reaching our decision in this appeal, we have given careful consideration to
the appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by the appellants and the examiner. As a consequence
of our review, we make the determinations which follow.
We turn first to the examiner’s rejection of claims 1, 3, 5, 6, 8 and 9 under
35 U.S.C. §102 as being unpatentable over Akamatsu ‘947. The examiner finds that
Akamatsu ‘947 discloses:
“rolling element [2] bearing” with an [axially] inner [race] ring
(3) and an outer [race] ring (1), the surface of each rolling
element having “minute recesses” or grooves (5) randomly
oriented and thus isotropic. Lubricant is employed (col. 4,
lines 19-28). [Answer at page 3].
The examiner, reasons that Akamatsu ‘947 need not expressly disclose the
displacement of the meniscus or that the lubricant meniscus forms a non-zero pressure
gradient. The examiner states:
There is reason to believe, based on the similarity of
structure, that the functional limitation(s) of displacement of
the meniscus, non-zero pressure gradient, etc. may be
inherent characteristic(s) of Akamatsu ‘947. . . [Answer at
page 4][emphasis added].
The examiner is correct that a prior art reference need not expressly disclose
each claimed element in order to anticipate the claimed invention. See Tyler
Refrigeration v. Kysor Indus. Corp., 777 F.2d 687, 689, 227 USPQ 845, 846-847 (Fed.
Cir. 1985). Rather, if a claimed element (or elements) is inherent in a prior art
reference, then that element (or elements) is disclosed for purposes of finding
3
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: September 9, 2013