Ex Parte LYDIC et al - Page 8




          Appeal No. 2002-0694                                                        
          Application No. 08/712,369                                                  


                               REMAND TO THE EXAMINER                                 


               We remand this application to the examiner to consider a               
          rejection of appellants' claims based upon the combined teachings           
          of Slick and the Chapter 19 documentation of record.  The                   
          examiner should determine whether it would have been obvious to             
          one having ordinary skill in the art, at the time appellants'               
          invention was made, to select cold rolling from among the known             
          hot rolling and cold rolling method alternatives (Chapter 19                
          documentation) when fabricating the rolled steel center sill of             
          Slick to achieve the desired, known, and expected advantages of             
          the cold rolling method that would be reflected in the                      
          characteristics of the resulting center sill.  As to the chosen             
          particular parameters and configuration for a cold worked center            
          sill (dependent claims), the examiner should determine whether              
          these features would have been obvious to one having ordinary               
          skill in the center sill and beam art, relying upon relevant and            


               3(...continued)                                                        
          because of the matter with which it deals, logically would have             
          commended itself to an inventor's attention in considering his              
          problem.  In re Clay, 966 F.2d 656, 659, 23 USPQ2d 1058, 1061               
          (Fed. Cir. 1992).                                                           


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