Ex parte MARKOVITZ et al. - Page 6




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

          Examiner states that tracking is a surface phenomenon and, so,               
          the oxide would be added to the outer insulation layer (FR8;                 
          EA7-8).  The Examiner contends that "it is implied by Penneck,               
          that his treatment is only for the outer insulation layer,                   
          because it would not make sense to apply it to an inner                      
          insulation layer where tracking would never occur" (EA8) and                 
          "that when, as in Foster's device, there are two separate                    
          insulating sections, an inner and an outer, then only the                    
          layers . . . of the outer section would be treated by the                    
          additive of Penneck, because it would make no sense to treat                 
          the layers of the inner section" (EA8).                                      
               Appellants argue that none of the references provides                   
          motivation for limiting the oxide filler to certain regions of               
          Penneck's polymer insulating material, much less to one or                   
          more oxide-filled mica tape layers interleaved with one or                   
          more oxide-free mica tape layers (Br12).  It is argued that                  
          Penneck requires the oxides to be used in combination with a                 
          hydrate of alumina and therefore cannot be said to suggest the               
          use of oxides alone (Br 13-14).  It is further argued that                   
          Penneck employs a polymeric (i.e., non-mica) insulating                      
          material and disperses the non-tracking additive (containing                 

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