Ex Parte Shaw et al - Page 2




             Appeal No. 2003-1657                                                               Page 2                
             Application No. 09/554,319                                                                               


                                                  BACKGROUND                                                          
                    The appellants' invention relates to a method and apparatus for hard machining                    
             a hardened workpiece (specification, p. 1).  A copy of the claims under appeal is set                    
             forth in the appendix to the appellants' brief.                                                          


                    The prior art of record relied upon by the examiner in rejecting the appealed                     
             claims is:                                                                                               
             Rescigno                           5,346,336                          Sep. 13, 1994                      
             Bailey                             5,761,976                          June 9, 1998                       
             The appellants' admission of prior art (Figures 1-3; specification, pages 4-51) relating to              
             a conventional hard turning operation (Admitted Prior Art).                                              


                    Claims 2 to 5, 7 to 9, 12, 13, 15, 16, 18 to 23, 25, 26, 29, 30 and 35 stand                      
             rejected under 35 U.S.C. § 103 as being unpatentable over the Admitted Prior Art in                      
             view of Bailey.                                                                                          









                    1 In the non-final rejection (Paper No. 10), the examiner incorrectly referred to pages 1 and 2 of
             the specification for the discussion of the Admitted Prior Art.                                          






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