Ex parte OKAYAMA et al. - Page 5




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


          (Answer, page 3).  However, these calculations only apply to                
          the reduction in thickness between the rod wire before cold                 
          rolling and the ribbon/flat wire after cold rolling and                     
          drawing (see Saur, column 3, lines 10-19).  The limitation                  
          recited in claim 8 on appeal requires a flat wire such that                 
          (t -t)/t  x 100 is equal to or more than about 90%, where t  isi    i                                            i                   
          the whole thickness of the cross section of the rod wire                    
          before cold rolling (i.e., in Saur at most 0.020 inch, see                  
          column 3, line 11) and t is the whole thickness of the cold-                
          rolled flat wire (which is not disclosed in Saur, see column                
          3, lines 16-17).  Therefore the examiner’s calculations do not              
          address the limitation as recited in claim 8 on appeal.                     
               For the foregoing reasons, the limitations recited in                  
          claim 8 on appeal are not disclosed, taught or suggested by                 
          the applied prior art unless, as urged by the examiner,                     
          rolling and drawing are matters of “design choice” and                      
          considered to be the “functional equivalent” of each other                  
          (Answer, page 4).  However, the examiner has not presented any              
          evidence or convincing reasons why one of ordinary skill in                 
          this art would have considered the two operations of rolling                


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