Appeal No. 1999-2062 Page 4
Application No. 08/928,311
Claims 13 through 26 stand rejected under 35 U.S.C. § 103
as being unpatentable over Hunt. The examiner's complete
statement of this rejection is reproduced below.
This patent discloses the formation of a grinding roll
having a tread pattern on it's exterior. The manner in
which the particular tread pattern is chosen is held to
be within the scope of one in the art under the routine
experimentation concept e.g. the pattern used would
depend on several factors such as material being treated
and desired end results. Thus, in order to use an
appropriate pattern, it would have been obvious for one
of ordinary skill in the art to modify Hunt by
experimenting to choose a pattern since routine
experimentation is within the scope of one skilled in the
art. The remaining limitations are also rejected under
this same concept e.g. the size of the tread rib members
would depend on the desired results. (first Office action
(Paper No. 4, mailed July 14, 1998), p. 3)
With respect to the rejection of claims 13 to 25, the
appellants argue on page 5 of the brief (Paper No. 8, filed
December 14, 1998) that the Hunt patent contains no teaching
or even suggestion of providing a method of manufacturing a
grinding roll which encompasses the step of manufacturing the
grinding roll such that the manufacturing roll is provided
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