Ex parte MARKOVITZ et al. - Page 4




          Appeal No. 1999-1942                                                         
          Application 08/770,037                                                       

          referred to as "Br__") and the reply brief (Paper No. 16)                    
          (pages referred to as "RBr__") for a statement of Appellants'                
          arguments thereagainst.                                                      
                                       OPINION                                         
               The claims are grouped to stand or fall together (Br9).                 
          Claim 1 is analyzed as representative.                                       
               Foster discloses an oxide-free resin-impregnated mica                   
          paper tape 12 applied over an oxide-free resin-impregnated                   
          turn mica paper tape 11, but, as to claim 1, does not disclose               
          the claimed: (1) woven fabric on one side of the mica paper;                 
          and (2) oxide particles dispersed in the woven fabric in just                
          one of the two layers.  The APA teaches resin-impregnated mica               
          paper 17 having a woven fabric 18 on one side, woven fabrics                 
          18a and 18b on both sides, or a woven fabric 18a on one side                 
          and a nonwoven fabric 18b on the other side.  The Examiner                   
          concludes that it would have been obvious to make insulation                 
          layer 12 in Foster from a resin-impregnated mica paper with a                
          woven fabric on one side in view of the APA (EA4).  This                     
          conclusion is properly not challenged by Appellants.  A number               
          of layers of the groundwall insulation 15 in APA figure 1                    
          could arbitrarily be designated as a first insulating layer                  

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