Ex Parte Tanaka et al - Page 5




               Appeal No. 2003-1188                                                                                               
               Application No. 09/987,374                                                                                         


               connectors of Baldwin for the purpose of reducing the unequal voltages that may occur                              
               in the winding and, therefore, improving the efficiency of the machine [answer, pages 3-                           
               4].                                                                                                                
                      Appellants argue that neither Aoki nor Baldwin teaches the claim recitation that                            
               the coil portions are formed by simultaneously winding wires.  Appellants assert that the                          
               coil portions of the applied prior art are wound sequentially and not simultaneously.                              
               Appellants also argue that the examiner has not set forth a motivation for modifying the                           
               cited references.  Appellants dispute the examiner’s position that the recitation of                               
               “simultaneously winding” is not entitled to patentable weight because it is a “product-by                          
               process” limitation of a structural component [brief, pages 5-7].                                                  
                      The examiner responds that Aoki discloses the structural limitations of the end                             
               product claimed by appellants.  The examiner asserts that there is no structural                                   
               difference between an armature which has the coils formed simultaneously and an                                    
               armature having the coils formed sequentially.  The examiner also asserts that Baldwin                             
               does teach the coil portions being formed simultaneously.  With respect to the                                     
               motivation to combine the references, the examiner notes that the equalizing                                       
               connectors of Baldwin are disclosed to solve the problems suffered by the Aoki                                     
               armature [answer, pages 6-10].                                                                                     
                      Appellants respond that the examiner has provided no rationale as to how or why                             
               the coil formed by simultaneously winding wires is the same as, or similar to, any of the                          

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