Ex parte MARKOVITZ et al. - Page 8




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

          including oxides (col. 1, lines 60-68).  Penneck discloses                   
          that it was known in the prior art to incorporate hydrated                   
          alumina in substantial amounts to polymeric materials to                     
          protect against "tracking" (irreversible degradation of                      
          surface material from the formation of conductive carbonized                 
          paths due to electrical discharge or sparking) (col. 1,                      
          lines 15-57).  Penneck discloses a synergistic anti-tracking                 
          effect due to component (b), such as allowing an increase in                 
          the amount of carbon black fillers to increase the U.V.                      
          (ultraviolet) resistance (col. 4, lines 8-35) and reducing the               
          amount of filler material without loss of anti-tracking                      
          properties (col. 4, lines 36-54).                                            
               Penneck is not directed to Appellants' problem of                       
          increasing the voltage endurance performance of electrical                   
          insulating material, but is directed to a different problem of               
          preventing tracking on molded and extruded polymers.  The                    
          prior art need not suggest solving the same problem set forth                
          by Appellants.  See In re Dillon, 919 F.2d 688, 693,                         
          16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (in banc) (overruling in               
          part In re Wright, 848 F.2d 1216, 6 USPQ2d 1959 (Fed. Cir.                   
          1988)).  However, when the references are directed to a                      

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