Ex Parte Noe et al - Page 9

             Appeal Number: 2006-1694                                                                           
             Application Number: 10/131,607                                                                     

             remand the application for the examiner and the appellants to address on the record                
             whether Mücke or Reesor, alone or in combination with other prior art, would have                  
             fairly suggested, to one of ordinary skill in the art, eliminating crossbow such that,             
             if no crossbow is caused by the strip processing device, the elimination of                        
             crossbow upstream of the strip processing device results in no crossbow                            
             downstream of the strip processing device.                                                         
                   In response to the rejection under 35 U.S.C. § 112, first paragraph, the                     
             appellants indicate that the steps in claims 5-7 were known in the art (brief, page                
             7).  The appellants point out that the step of forming a sliding mean value filtering              
             out the effect of waviness (claim 6) and the step of filtering out the effect of strip             
             camber (claim 7) are not disclosed in the applied references (reply brief, page 4).1               
             A question remains, however, as to whether, if those steps were known in the art,                  
             the inventions claimed in claims 6 and 7 would have been obvious to one of                         
             ordinary skill in the art over Mücke or Reesor.  We further remand the application                 
             for the examiner and the appellants to address on the record whether claims 5-7                    
             add steps that were known in the art and, if so, whether the inventions in those                   
             claims would have been obvious to one of ordinary skill in the art over Mücke or                   
             Reesor, alone or in combination with other prior art.  If the appellants argue that                
             those steps were not known in the art, then the examiner and the appellants should                 


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