Appeal No. 2001-0444 Page 9
Application No. 08/949,803
system 32 comprised of non-metallic strength members 33. While the examiner offers,
as motivation, such generalities as “to have a cable that has a high flexibility torque
design and high overall tensile strength,” this still does not explain why the artisan
would have sought to place the copper cable of Gareis exactly where appellant places
the conductive material, i.e., wrapped around the outer diameter of the core structure
and having the non-metallic strength layers wrapped around the conductive material.
Since the examiner has presented no convincing rationale for employing the
copper conductors of Gareis in Arroyo 442 in the manner recited in the instant claims,
we will not sustain the rejection of claims 7-9 and 12 under 35 U.S.C. 103. Because
Arroyo 060 is no help in this regard, we also will not sustain the rejection of claims 10
and 11 under 35 U.S.C. 103. Because we find no prima facie case since there would
have been no reason to combine the copper conductors of Gareis with the cable of
Arroyo 442 in a manner which would result in the instant claimed subject matter, we will
not address the arguments relating to inherency and due consideration to the functional
limitations of the claims.
Regarding claims 20 and 21, independent claim 20 is much narrower in scope
than independent claim 7 and the reliance on APA for a termination of the cable by a
cone configuration does nothing to address the deficiencies of the primary references.
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