Ex Parte Gorrell - Page 6



          Appeal No. 2005-0267                                                        
          Application No. 09/982,154                                                  

          thousands, is a matter of obviousness for one of ordinary skill             
          in the art as long as the prior art teaches the suitability of              
          the selections.  In re Susi, 440 F.2d 442, 445, 169 USPQ 423, 425           
          (CCPA 1971); In re Lemin, 332 F.2d 839, 841, 141 USPQ 814, 815              
          (CCPA 1964).  Appellant has failed to advance any compelling                
          argument that refutes the basic tenet of the examiner's                     
          rejection, i.e., appellant has not explained why it would have              
          been nonobvious for one of ordinary skill in the art to include             
          an additional electrically relatively non-insulative polymer                
          layer in the high voltage cable of Hastings '827 for the purpose            
          of protecting the cable against damage during transient over-               
          voltages.                                                                   
               Appellant's principal brief devotes much analysis to each of           
          the features recited in all the claims on appeal and the                    
          differences between these features and the cables disclosed in              
          each of the three cited references.  As such, appellant's                   
          principal brief is tantamount to attacking the cited references             
          individually, rather than in combination.  It is by now axiomatic           
          that it is not necessary for a finding of obviousness under § 103           
          that all the elements or teachings of one reference be fully                
          combined with those of another reference.  In re Griver, 354 F.2d           

                                         -6-                                          




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

Last modified: November 3, 2007