Ex parte OKAYAMA et al. - Page 4




          Appeal No. 1998-2756                                                        
          Application No. 08/448,137                                                  


          concludes that it would have been a matter of “design choice”               
          as to whether the reduction in thickness taught by Saur is                  
          accomplished by rolling and/or drawing (Answer, paragraph                   
          bridging pages 3-4).                                                        
               Even if combined in the manner proposed by the examiner,               
          we determine that the references would not have disclosed,                  
          taught or suggested the limitations of the claims on appeal                 
          (see the Brief, paragraph bridging pages 7-8).  As admitted by              
          the examiner on page 3 of the Answer, Jin fails to disclose                 
          any cold rolling step.  Saur fails to disclose or teach any                 
          cold rolling step that reduces the thickness of the wire, much              
          less the reduced thickness of about 90% as required by claim 8              
          on appeal.  Saur teaches that the wire 34 is “flattened                     
          between pressure rolls to form the ribbon 36" of Figure 7 and               
          then the ribbon 36 is drawn “to form a reduced thickness                    
          ribbon” (column 3, lines 16-19, emphasis added).  Accordingly,              
          Saur teaches that drawing reduces the thickness but fails to                
          teach that the cold rolling reduces the thickness.                          
               The examiner calculates that the thickness is reduced by               
          90% from the disclosure of Saur at column 3, lines 10-19                    


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