Ex parte BATLIWALLA et al. - Page 9




          Appeal No. 1997-0236                                                        
          Application No. 08/211,829                                                  



          references of Shulver, Betts, and Bruns.  In the responsive                 
          arguments portion at page 7 of the Answer, the Examiner                     
          suggests that Smith-Johannsen meets the requirements of claim               
          1 by the fact that dual insulating jackets of the same                      
          material are used.  After reviewing the claim language of                   
          claim 1 in light of the arguments of record, it is our view                 
          that the Examiner has not addressed the specifics of the                    
          language in the last paragraph of claim 1.  To establish prima              
          facie obviousness of a claimed invention, all the claim                     
          limitations must be suggested or taught by the prior art.  In               
          re Royka, 490 F.2d 981, 180 USPQ 580 (CCPA 1970).  All words                
          in a claim must be considered in judging the patentability of               
          that claim against the prior art.  In re Wilson, 424 F.2d                   
          1382, 1385, 165 USPQ 494, 496 (CCPA 1970).  Since the                       
          disclosure of Smith-Johannsen is totally silent as to any                   
          concern for flame protection, we fail to see how such                       
          disclosure would meet claim limitations directed to a flame                 
          test, let alone under the specific conditions set forth in the              
          last paragraph of claim 1.  If the Examiner intends to suggest              
          that the materials used in the insulating jackets of Smith-                 

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