Appeal No. 2000-0650
Application No. 08/599,668
the present invention, either admixed with paraffin as an
external lubricant, or alone (or as admixtures themselves) as
internal lubricants.” Col. 5, ll. 57-66, underlining added.
Accordingly, Saunders ‘737 merely teaches the external lubricant
of paraffins and esters that has also been disclosed by Saunders
(col. 3, ll. 15-22), and teaches esters alone only as an internal
lubricant for the insulating layer.
We also note that the examiner has not addressed the last
step required by claim 22 on appeal, namely that after winding
and mounting the wire in the stator windings, the lubricant is
exposed to a compatible refrigerant/refrigeration system without
damage (i.e., the refrigerant will not cause precipitation of the
lubricant; specification, page 2, ll. 5-15; page 3, ll. 5-17;
page 6, ll. 21-29; see the Reply Brief, page 2).
For the foregoing reasons, we determine that the examiner
has not presented a sufficient factual basis to support a prima
facie case of obviousness in view of the reference evidence and
appellants’ admitted prior art. See In re Warner, 379 F.2d 1011,
1017, 154 USPQ 173, 178 (CCPA 1967). Accordingly, we cannot
sustain the examiner’s rejection.
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