Appeal No. 2005-2687
Application 10/322,194
shapes” (claim 11). In essence, we find that the relative
nature of the claim language that defines the paths of the
cooled slag does not serve to distinguish the claimed slag from
the slag of the prior art. We essentially agree with the
examiner that if the cut pieces of the prior art are in the
form of “a bar or other round shape, the slag shapes will be
arcuate” (page 5 of answer, first paragraph), at least
generally so. On the other hand, appellant has not established
on the record, let alone explained, how the actual paths of the
cooled slag in the prior art are substantively different than
the paths of the cooled slag within the scope of the appealed
claims.
The rejection of claims 12-15 is another matter. These
claims specify particular grain patterns on the edge which
connect the first and second surfaces of the piece of cut
metal. Claim 12, for example, recites that “said edge has a
grain pattern that is not perpendicular to said first and
second surfaces of said cut metal.” As acknowledged by the
examiner, the cited references are silent with respect to the
grain pattern of the edge of the cut metal. Faced with such
silence, it is the examiner’s burden to set forth a rationale
which explains either why the prior art inherently has a grain
5
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007