Appeal No. 1999-1942
Application 08/770,037
suggest that dispersing oxide in a woven fabric bonded to a
mica paper, as opposed to a solid molded or extruded polymer,
will prevent tracking. While the Examiner has invented a
plausible motivation for using an oxide-filled layer only on
the outside layer, this reasoning finds no support in Penneck
and appears to have been constructed using hindsight. The
Examiner has found an oxide material used in an electrical
insulation environment to solve a different problem than that
addressed by Appellants, and worked backward by inventing
reasons to modify Foster to arrive at the claimed invention
rather than showing evidence in Penneck or in the knowledge of
those of ordinary skill in the art that would have suggested
the proposed modification. Because Appellants disclose an
unexpected voltage endurance performance property using
oxide-filled and oxide-free layers, as discussed in the next
section, (which is inherent and need not be expressly
claimed), which is not taught or suggested by Penneck, there
must be more than an invented motivation for doing what
Appellants have done.
Second, we find no teaching in Penneck that oxide
component (b) is useful alone for preventing tracking; the
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