Ex parte THIERRY - Page 7

          Appeal No. 1998-1079                                                        
          Application No. 08/572,166                                                  

          own components or a need to protect an external object against              
          abrasive action caused by the rope.                                         
               Even though the applied prior art does not mention the                 
          protection against frictional wear which is recited in the                  
          instant claims, we agree with the examiner that if the prior                
          art is capable of performing the intended use, then such claim              
          language is met.  Thus, appellant’s argument that Sawyer’s                  
          braided elements B and D are soft materials is not persuasive               
          since such materials do offer some protection, albeit not the               
          same amount of protection envisioned by appellant, against                  
          frictional wear of the conductors.  Merely because the braided              
          elements B and D of Sawyer are disclosed as insulating                      
          coverings does not preclude their additional function as a                  
          “protecting means.”                                                         
               The problem we have with the instant rejection goes more               
          to the motivation for combining the references.  We find                    
          nothing, other than impermissible hindsight gleaned from                    
          appellant’s disclosure, which would have led the artisan to                 
          apply the insulating coverings of Sawyer to Clouet in a manner              
          so as to use a braided insulating sheath between the metal                  
          braided shield and the conductors, or on the external surface               

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