Ex Parte Engl et al - Page 3

                Appeal 2006-2882                                                                                   
                Application 10/433,729                                                                             
                       Rather than reiterate the respective positions advocated by the                             
                Appellants and by the Examiner concerning these rejections, we refer to the                        
                Brief and to the Answer respectively for a complete exposition thereof.                            
                                                                                                                  
                                                    OPINION                                                        
                       The Examiner rejected claims 12-14 and 18-25 under § 102(e) as                              
                being anticipated by Guelton.  The Examiner found that Guelton discloses                           
                Appellants’ claim features, including “immediately after said casting step                         
                and without reheating said roughed strip, continuously processing said                             
                roughed strip by being hot rolled in a roll stand in a single hot roll pass to the                 
                final thickness of the hot strip.” (Answer 3-4).  Appellants dispute whether                       
                Guelton discloses the aforequoted claim feature (Br. 6).                                           
                       Appellants argue that Guelton fails to disclose the “influences of such                     
                a step [of hot rolling in a single pass immediately after casting the roughed                      
                strip] on the structure and the properties such hot rolling has [on the steel hot                  
                strip], and thus the desirability of performing the hot rolling step” (Br. 5).                     
                Appellants argue that Guelton’s hot rolling is merely an option and Guelton                        
                actually discloses an advantage in eliminating the hot rolling (Br. 5).                            
                Specifically, Appellants contend that Guelton discloses removing hot rolling                       
                from the process so as to eliminate the risk of hot cracking the steel strip by                    
                the necessary reheating prior to hot rolling (Br. 5).   Appellants further                         
                contend Guelton’s steel is austenitic in structure regardless of the                               
                temperature used to hot roll it, such that there is no reason to implement                         
                Guelton’s optional hot rolling step (Br. 5).                                                       
                       The Examiner responds that Guelton discloses all of the features of                         
                claim 12 (Answer 6).  Specifically, the Examiner indicates that Guelton                            

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