Ex parte Tsukada

Board of Patent Appeals and Interferences

Oct 27, 2000

08599105 (B.P.A.I. Oct. 27, 2000)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte TORU TSUKADA
_____________
Appeal No. 1999-2755
Application No. 08/599,105
______________
ON BRIEF
_______________
Before McCANDLISH, Senior Administrative Patent Judge, and
NASE and GONZALES, Administrative Patent Judges.
GONZALES, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1, 5 and 11. Claims 2, 3, 6 and 7 have
been objected to as depending from a non-allowed claim.
Claims 4 and 8 through 10 have been canceled.
We AFFIRM.
Appeal No. 1999-2755
Application No. 08/599,105
Rejections of claims 1, 5 and 11 under 35 U.S.C. § 1031
as being unpatentable over the AAPA in view of Iijima or Scott
et al. have been withdrawn by the examiner as indicated on
pages 2 and 4 of the answer.
2
BACKGROUND
The appellant's invention relates to a method of
manufacturing a guide rail and a slide of a linear guide
device. A copy of the claims under appeal is set forth in the
appendix to the appellant's brief.
In addition to the applicant’s admitted prior art
(hereinafter, “AAPA”) (see the answer, page 2, citing the
specification, pages 5 and 6), the examiner relies upon the
following reference as evidence of obviousness:
Takahashi et al. (Takahashi) 5,356,255 Oct.
18, 1994
Claims 1, 5 and 11 stand rejected under 35 U.S.C. § 103
as being unpatentable over the AAPA in view of Takahashi. 1
Rather than reiterate the conflicting viewpoints advanced
by the examiner and the appellant regarding the above-noted
rejection, we make reference to the answer (Paper No. 31) for
the examiner's complete reasoning in support of the rejection,
and to the brief (Paper No. 30) for the appellant's arguments
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Application No. 08/599,105
3
thereagainst.
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In our evaluation of Takahashi, we have considered all2
of the disclosure of the reference for what it would have
fairly taught one of ordinary skill in the art. See In re
Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the Board has taken into account
not only the specific teachings, but also the inferences which
one skilled in the art would reasonably have been expected to
draw from the disclosure. See In re Preda, 401 F.2d 825, 826,
159 USPQ 342, 344 (CCPA 1968).
4
In the brief (p. 3), the appellant indicates that the
claims stand or fall together. Accordingly, in conformance
with 37 CFR § 1.192(c)(7), we select claim 5 for review, and
shall focus exclusively thereon, infra. The remaining claims
will stand or fall with claim 5.
OPINION
In reaching our conclusion on the obviousness issue
raised in this appeal, this panel of the Board has carefully
considered the appellant’s specification and claims, the AAPA,
the applied patent, and the respective viewpoints of the2
appellant and the examiner. As a consequence of our review,
we make the determination which follows.
We sustain the rejection of the appellant’s claim 5 under
35 U.S.C. § 103. It follows that the rejection of claims 1
and 11 is likewise sustained, since these claims stand or fall
Appeal No. 1999-2755
Application No. 08/599,105
According to the appellant’s specification (pp. 19 and3
20), the rust-proofing surface treatment is achieved by metal
plating or by applying a film of resin on the surface to be
protected.
5
with claim 5, as earlier indicated.
Claim 5 is drawn to a method of manufacturing a slider
body of a linear guide device, the linear guide device
including a guide rail and a slider having a body and a load
rolling-element rolling groove, the method comprising the
steps of grinding a groove surface of the load rolling-element
rolling groove, preparing a protecting member, the protecting
member being cylindrical and having a round surface, fitting
the protective member to the groove surface with at least a
portion of the round surface being brought in close contact
with at least a portion of the groove surface, while surfaces
of the slider adjacent the groove are not protected, and
thereafter subjecting the slider body to rust-proofing surface
treatment.3
Turning now to the evidence of obviousness, we are
informed by the appellant’s specification (pp. 5 and 6) that
it was known in the art prior to his invention to manufacture
a bearing slider by: machining a slider body to form mounting
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reference surfaces and load ball rolling grooves; subjecting
the slider body to plating so as to form a rust-proofing layer
over all the surfaces of the slider body including the
mounting surfaces and grooves; and grinding the mounting
surfaces and grooves, which for operating accuracy should not
be plated, to remove the rust-proofing. We are further
informed that the problem with the prior art method is that
when the slider body is mounted on the grinder after the
plating step, the surfaces of the slider body other than the
mounting surfaces and the grooves may be damaged or the rust-
proofing layer may be unintentionally removed.
As to the Takahashi document, this patent makes us aware
that, at a time prior to the appellant’s invention, it was
known in the electrodeposition art to mask portions of an
element prior to subjecting the element to electrodeposition
in order to prevent the deposition of coating material on the
portions so masked. Col. 2, ll. 3-10. For example, Takahashi
teaches that it was well known in the art to use a masking
plug of foamable material to mask the threaded bore of a nut
prior to electrodeposition. In use, the plug was inserted
into the threaded bore prior to electrodeposition of the nut
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and the nut was then heated to cause the foamable material to
expand into the grooves of the threads. Id. at 44-51. It was
also known, as evidenced by Takahashi, to fill the threaded
bore of a nut with
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Application No. 08/599,105
The test for obviousness is what the combined teachings4
of references would have suggested to one of ordinary skill in
the art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089,
1091 (Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981).
8
a sublimination solid prior to electrodeposition (id. at 51-
53) or with a silicon rubber plug molded to fit within the
threaded bore of the nut (col. 6, ll. 4-21).
In applying the test for obviousness, this panel of the4
Board determines that it would have been obvious at the time
the invention was made to one having ordinary skill in the
art, from a collective assessment of the applied teachings, to
fit a protective member to the surface of the groove formed in
the slider body of the AAPA prior to rust-proofing following,
for example, the teaching of Takahashi. In our opinion, the
incentive on the part of one having ordinary skill in the art
for making this modification would have simply been to gain
the art recognized benefit of the masking step, as readily
discerned from a review of the teachings of Takahashi.
Takahashi makes it apparent to us that one of the purposes of
masking a surface prior to electrodeposition is to prevent the
coating particles in an electrodeposition bath from adhering
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to the masked surface during the electrodeposition coating
process and, thus, eliminate
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the need to remove coating particles from the surface after
the coating process is completed.
The arguments advanced in the brief relative to the
obviousness rejection (pp. 4 through 6) do not convince us
that the examiner erred in rejecting claim 5 under 35 U.S.C. §
103.
Contrary to the view of the appellant (brief, pp. 4 and
5), we consider the Takahashi document to be appropriate
analogous prior art. Simply stated, it is our viewpoint that
the appellant has an overly restrictive view of the teachings
of the reference, focusing upon the particular item, i.e., the
nut and panel assembly, in Takahashi undergoing
electrodeposition. On the other hand, viewing the Takahashi
document as a whole, and, of course, from the perspective of
one having ordinary skill in the art, it is quite apparent to
us that the disclosure of Takahashi is clearly reasonably
pertinent to the problem addressed by the appellant, i.e.,
unwanted deposit of coating material on surface areas during
an electrodeposition process. Hence, it is fairly viewed as
analogous prior art. See In re Clay, 966 F.2d 656, 659, 23
USPQ2d 1058, 1061 (Fed. Cir. 1992), and In re Wood, 599 F.2d
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1032, 1036, 202 USPQ 171, 174 (CCPA 1979).
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It is also argued by the appellant that the AAPA and the
Takahashi document are not combinable because they lack the
requisite motivation or suggestion to combine them (brief, pp.
5 and 6). We do not share this view. As articulated, supra,
we determined that the evidence of obviousness would have
certainly provided ample incentive or motivation to one having
ordinary skill in the art for combining the applied teachings.
Accordingly, we find that a prima facie case of
obviousness has been established, which the appellant has not
sought to rebut by any objective evidence of nonobviousness.
In re Huang, 100 F.3d 135, 139, 40 USPQ2d 1685, 1689 (Fed.
Cir. 1996).
In summary, this panel of the Board has affirmed the
decision of the examiner to reject claims 1, 5 and 11 under
35 U.S.C. § 103.
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
)
HARRISON E. McCANDLISH )
Senior Administrative Patent Judge )
)
)
) BOARD OF PATENT
JEFFREY V. NASE )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
JOHN F. GONZALES )
Administrative Patent Judge )
JFG:hh
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Application No. 08/599,105
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