Applicants argue that claim 27, and inferentially, dependant claims 28 and 29 have not been shown
to be unpatentable since the references do not suggest adding metal powder to the insulation to increase
z-axis strength. The z-axis is defined in applicants’ specification as the direction perpendicular to the plane
in which the fibers in the insulation naturally orient themselves during processing. Specification, p. 6. The
examiner argues that the “improved z-axis strength recited in claim 27 is not convincing of error since no
minimum z-axis strength is set forth in claim 26 from which it depends.” Examiner’s Answer, p. 6. We
fail to see the significance of the fact that claim 26, does not specify a minimum z-axis strength. The6
increased z-axis strength is a property of the claimed insulation. Applicants have asserted that the z-axis
strengthening is a difference over the insulation described in the cited references and we are not free to
ignore it. To adequately answer this assertion, the examiner may show that the statement is incorrect by,
for example, showing that the property is expressly taught in a reference or inherently results from the
processes described in the references. The examiner may also provide reasoning to explain while one
having ordinary skill in the art would have expected that z-axis strength to increase. Since the examiner has
not directed us to any relevant teaching or provided adequate reasoning, the z-axis strength limitation can
not be considered obvious. We reverse the rejection of claims 27, 28 and 29.
With respect to claims 31 and 32, applicants argue that the inclusion of a binding amount of metal
powder in the insulation along with ceramic components is novel. The examiner has not directed us to any
evidence in the record which would lead one of ordinary skill in the art to an insulation that included a metal
binder. Nor has the examiner provided any explanation why a person having ordinary skill in the art would
have been led to an insulation including a metal binder. The rejection of claims 31 and 32 is reversed.
6
If the examiner thought the phrase “improved z-axis strength” causes the claims to be indefinite, an
appropriate rejection under 35 U.S.C. § 112, ¶ 2, should have been made. Since no such rejection has been made, we
assume that one having ordinary skill in the art would understand the metes and bounds of the claimed subject matter.
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Last modified: November 3, 2007