Ex parte TAKAHASHI et al. - Page 4




          Appeal No. 96-1530                                                          
          Application No. 07/767,488                                                  


          of the wire.  See claim 8 in conjunction with page 7.                       
          According to page 7, lines 2-4, of the specification, such an               
          orientation is desirable because “electrons flows more easily               
          in the direction of the C face than in the oxide powder to,                 
          for example, in the direction of the C axis which is normal to              
          the C face.”                                                                
               The examiner’s rejection is predicated on the ground that              
          the claimed orientation will inherently follow upon                         
          substituting the plate-like particles described in Takekawa                 
          for the superconducting powder used in the process of Jin.                  
          See Answer, page 3.  As acknowledged by the examiner, however,              
          the Jin reference does not recognize the importance of                      
          obtaining the claimed orientation, nor does it recognize the                
          importance of placing the plate-like particles in a tube prior              
          to drawing the tube to obtain the claimed orientation.  See                 
          the Jin reference in its entirety.  Although the Takekawa                   
          reference teaches plate-like crystal particles having lower                 
          electrical resistivity than a rectangular crystal, thus                     
          possibly implying superconducting properties (L853, Figure 4),              
          it does acknowledge (L851) that:                                            


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