Ex Parte NAKASE et al - Page 11




          Appeal No. 2002-0159                                   Page 11              
          Application No. 08/951,317                                                  

          The examiner responds that the insulating resinous filler                   
          29 of Oosuka and the shielding portion 510a meet the recitations            
          of claims 9 and 10 [answer, page 9].                                        
          We will not sustain the examiner’s rejection of                             
          independent claims 9 and 10 because the examiner has failed to              
          establish a prima facie case of obviousness.  Filler 29 of Oosuka           
          is an insulating oil.  This is not a resinous filler (claim 9)              
          and there is no disclosure within Oosuka of the dielectric                  
          constant of this oil or of the dielectric constant of the primary           
          spool 514 (claims 9 and 10).  Although they are different                   
          materials, the dielectric constants are not discussed.  Claim 9             
          also recite a shielding portion projecting axially from an end of           
          the secondary spool to cover the high tension terminal immersed             
          in the insulating resinous filler.  Claim 10 recites a shielding            
          portion projecting longitudinally from a straight line between              
          the end of the outer periphery of the high tension terminal                 
          immersed in the insulating filler.  Both claims also recite that            
          the primary coil is not wound on the shielding portion of the               
          primary spool.  The examiner has not specifically addressed these           
          limitations of the claims.  The shielding portion 510a of Oosuka            
          identified by the examiner refers to a bottom portion of the                
          secondary spool.  This does not meet the recitation that the                








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