Ex Parte BACHMANN et al - Page 4



          Appeal No. 2000-0650                                                        
          Application No. 08/599,668                                                  

          appellants’ admitted prior art (especially Saunders ‘737) as                
          evidence that it was well known in this art to use the winding              
          and mounting steps in stator windings of the wire of Saunders               
          (id.).  From these findings, the examiner concludes that it would           
          have been obvious to one of ordinary skill in the art to use the            
          known amide external lubricants, as admitted by appellants’                 
          specification and shown by Watanabe, as the lubricant coating for           
          the insulated wire of Saunders in the known process steps of                
          forming a stator winding (Answer, pages 5-6).  We disagree.                 
               As correctly argued by appellants, Watanabe does not                   
          disclose an amide external lubricant but adds all the materials,            
          including the lubricant, in one composition to form the                     
          electrical insulating composition (Brief, page 7).  See Watanabe,           
          col. 1, ll. 11-16; col. 3, ll. 46-52; and Examples 3-5.                     
          The examiner has also misconstrued appellants’ admission of                 
          prior art on page 1 of the specification.  The specification                
          discloses, at page 1, ll. 15-29, that                                       
                    It is known from the DE Offenlegungsschrift 1947071               
                    and the GB Patent Specifications 1175059 and 1175060 to           
                    provide electrical cables with lubricants for the                 
                    purpose of reducing the mutual friction between the               
                    cables.  When such a lubricant is added to the                    
                    insulating layer around the conductor ....                        
                    The preferred lubricant added to the insulating                   
                    layer of polyolefin according to the above-mentioned              
                    documents is an amide which is added in various amounts           
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