Ex parte WEST - Page 14




          Appeal No. 1999-2259                                                        
          Application 08/711,614                                                      


          surface, . . .,[and] Slicer et al. teaches the use of a form                
          having a generally flat surface for reinforcing a busway                    
          housing against surge loads.”  Examiner’s Answer at page 8.                 
          Therefore, Examiner concludes, “In combination, Rinderer and                
          Slicer et al. teach the disclosed surge clamp as claimed.”                  
          Examiner’s Answer at page 8.                                                
               We have already established, supra, that Rinderer does                 
          not teach or suggest a surge clamp.  However, Slicer teaches a              
          surge clamp at column 3, lines 59-62: “. . . a generally U-                 
          shaped surge clamp 98 which has opposite mounting tabs through              
          which a  fastener may connect the clamp 98 to the opposite                  
          rails.”  Slicer also teaches busway housing.  Slicer’s Figures              
          2 and 5 illustrate busway housing.  Additionally, in Slicer,                
          column 3, line 15-16 discloses, “The ground bus 42, together                
          with the pair of opposite side rails 38 form a housing for the              
          main phase bus bars.”  However, Slicer does not teach or                    
          suggest a surge clamp of “an extruded form being cutable to a               
          length.”  Moreover, Slicer contains no “reason, suggestion or               
          motivation” whereby a person of ordinary skill in the field of              
          surge clamps would seek to combine the teaching of Slicer with              


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