Ex Parte LEMELSON - Page 6



          Appeal No. 2003-0545                                       Page 6           
          Application No. 08/436,096                                                  

          1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147           
          (CCPA 1976).  The examiner's position (answer, page 4) is that              
          Snowden discloses all of the features claimed except for the                
          substrate being a light-conducting substrate.  To overcome this             
          deficiency of Snowden, the examiner turns to Sakurai for a                  
          teaching of the use of an optical fiber with an electrical                  
          conductor to transmit both electrical energy and optical signals.           
          In the examiner's opinion, it would have been obvious to modify             
          Snowden's line by adopting the teaching of Sakurai to transmit              
          both electrical energy and optical signals.                                 
               Appellant asserts (brief, page 3) that the examiner fails to           
          provide motivation to combine the teachings of a superconducting            
          line of Snowden with the simple electrical cable of Sakurai.  It            
          is further argued (brief, pages 4 and 5) that the references                
          teach away from the combination because Snowden teaches that the            
          superconducting materials need to be surrounded by materials                
          having a high degree of thermal and electrical conductivity with            
          an electrically conductive core, whereas appellant's invention              
          requires that the core has an outer stratum that is electrically            
          insulative.                                                                 








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