Ex Parte Kabeya et al - Page 10

                Appeal 2007-2421                                                                             
                Application 10/289,793                                                                       
                showing that where the Examiner relies on a combination of                                   
                disclosures, the Examiner failed to provide sufficient evidence to                           
                show that one having ordinary skill in the art would have done what                          
                Applicants did.  United States v. Adams, 383 U.S. 39 (1966).                                 

                                             ANALYSIS                                                        
                      There are two groups of rejection on appeal, the rejection of                          
                claims 1-18 and the rejection of claim 19.  These two groups are                             
                discussed below.                                                                             

                      i)    The Rejections of Claims 1-18                                                    
                      The Examiner and JFE agree that claims 1-18 are directed to a                          
                method of manufacturing a hot-dip metal strip where no submersed                             
                support rolls are employed in the molten metal bath.                                         
                      The Examiner has rejected claims 1-18 based upon Kawamura                              
                alone or in combination with various references.  The Examiner relies                        
                upon Kawamura as describing a hot-dip metal strip process that                               
                utilizes a molten metal bath that lacks a submersed support roll.                            
                (Answer, pages 3-4).  In particular, the Examiner states that                                
                Kawamura Figure 1 depicts a bath that does not include submersed                             
                support rolls.  (Answer, p. 9).                                                              
                      JFE states that Kawamura does not mention the removal of a                             
                submersed support roll from the conventional tank and that one of                            
                ordinary skill in the art would understand that submersed rolls were                         
                necessarily present.  (Appeal Brief, pages 12-14).  JFE relies upon a                        
                declaration from Mr. Kawamura, a named coinventor of the                                     
                Kawamura reference.  Mr. Kawamura testifies that he did not even                             

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