Ex Parte Scherb et al - Page 7

            Appeal Number: 2006-2066                                                                     
            Application Number: 10/743,461                                                               

            not persuasive even if it is correct, because a peak pressure of                             
            2000 kN/m2 (2 MPa) falls within the appellants’ recited range of                             
            less than or equal to approximately 2 MPa.                                                   
                  The appellants argue that Edwards would not have enabled                               
            one of ordinary skill in the art to make the claimed machine                                 
            without undue experimentation (reply brief, pages 3-5).  The                                 
            appellants provide no evidence or reasoning in support of that                               
            argument, and there is no apparent reason why one of ordinary                                
            skill in the art would not have been able, through no more than                              
            routine experimentation, to use the full range of Edwards’ press                             
            nip lengths and maximum pressing pressures.                                                  
                  We therefore conclude that the machine claimed in the                                  
            appellants’ claim 1 would have been obvious to one of ordinary                               
            skill in the art over Edwards.                                                               
                                                Remand                                                   
                  We remand the application to the examiner to address on the                            
            record whether the machine claimed in the appellants’ claims 2-                              
            33 would have been prima facie obvious to one of ordinary skill                              
            in the art over Edwards, alone or in combination with the                                    
            additional references applied in the examiner’s rejections                                   
            and/or other prior art.                                                                      




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