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 9Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
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