Ex Parte NAKASE et al - Page 10




          Appeal No. 2002-0159                                   Page 10              
          Application No. 08/951,317                                                  

          provides a conductive surface area to moderate electric field               
          strength around the connecting member.  The examiner has                    
          essentially ignored these specific recitations of independent               
          claims 1, 4 and 14.  The examiner’s position that appellants have           
          not described how the disclosed and claimed conductive member               
          moderates the electric field strength is not properly addressed             
          in this art rejection.  Appellants’ specification describes that            
          the larger surface area represented by the conductive members               
          shown in Figures 2, 3 and 5-7 moderates the electric field                  
          strength around the connecting member.  The examiner has offered            
          no rationale why the truth of appellants’ specification should be           
          doubted.  Since the examiner has not shown how the conductive               
          member 33 of Oosuka meets the claimed limitations, the examiner             
          has failed to establish a prima facie case of obviousness.                  
          With respect to independent claims 9 and 10, appellants                     
          argue that Oosuka fails to disclose an insulating resinous filler           
          having a dielectric constant different from the primary spool,              
          and a shielding portion of the primary spool projecting from an             
          end of the secondary spool to cover the high tension terminal               
          immersed in the insulating resinous filler.  Appellants also                
          assert that Endo fails to overcome the deficiencies of Oosuka               
          [brief, page 17].                                                           








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