Appeal No. 2002-0510 Page 23
Application No. 09/139,309
potting compound 14p," col. 3, ll. 47-50, the examiner fails to show that the prior art as
a whole recognized that the output of the assembly of varistors would have been
affected by adjusting the thickness of its insulation cover 28. Recognition of this
dependence is essential to the obviousness of conducting experiments to decide the
thickness that will offer an acceptable output. The examiner gives no basis for the
obviousness of the necessary experiments apart from the appellants' disclosure
thereof. Therefore, we reverse the obviousness rejection of claims 17 and 18 and of
claims 19 and 20, which respectively depend therefrom, over Downing and Hyatt.
Obviousness Rejections of Claims 17-20 over Slepian, Hyatt, and Beck
and over Downing, Hyatt, and Beck
At the outset, we note that although the appellants point out differences in what
claims 17-20 cover, (Appeal Br. at 17), this is not an argument why the claims are
separately patentable. Therefore, claims 18-20 stand or fall with representative
claim 17.
With this representation in mind, we address the two points of contention
between the examiner and the appellants. First, the appellants repeat their argument
that none of the references teach the use of different layers having different particle
loadings. To wit, they argue that "Beck, at al. also does not teach differently formulated
layers of variable voltage material." (Appeal Br. at 18.) For the reasons explained
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