Ex parte ARCHIBALD et al. - Page 9




          Appeal No. 1998-1289                                                        
          Application 07/906,492                                                      


                 Nelson discloses a rim making process comprising the                 
            steps of                                                                  


                 providing a strip of metal, which may be rolled,                     
                 at the rolling mill, to a form having the cross                      
                 section which is to be given to the finished                         
                 rims, . . . bending a strip of metal of this                         
                 cross section, and of suitable length, to form                       
                 an annulus, the adjacent ends of said strip                          
                 being welded together so that a complete ring is                     
                 formed, and, then, severing this annulus along                       
                 the central, longitudinal plane to form two                          
                 complete rims [page 1, lines 46 through 56].                         

                 According to Nelson, this process provides the                       
            benefits of “rims [that] can be manufactured more                         
            efficiently and at lower cost” (page 1, lines 8 through                   
            10), “economies of construction” (page 1, line 26) and “a                 
            more convenient and economical production of these rims”                  
            (page 1, lines 94 and 95).                                                


                 The test for obviousness is not whether the features                 
            of a secondary reference may be bodily incorporated into                  
            the structure of the primary reference; nor is it that                    
            the claimed invention must be expressly suggested in any                  
            one or all of the references.  Rather, the test is what                   
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