Appeal No. 2002-2050
Application No. 08/973,019
the rationale or motivation for combining the references to be
that stated by the examiner on page 5 of the Answer, "to prohibit
development of corona discharge," as taught by Elton '565.
Appellant argues (Request, pages 7-8) that we did not
"adequately treat the evidence submitted as to secondary
considerations." Specifically, appellant takes issue with our
assertion that the declarations of Mr. Hirt and Mr. Fenton fail
to establish a nexus between commercial success and the claimed
invention because they rely on a definition of "high voltage"
that is of a different scope than the claimed subject matter.
Appellant then contends that there is no lack of a nexus "because
it is the claimed structure of a high-voltage rotating electric
machine that has the claimed high-voltage stator winding . . .
that produces the superior and unexpected results noted."
Appellant compares claim 1 to claim 29 of Piasecki (223 USPQ 785,
786-87 (Fed. Cir. 1984) to show that "there is no reason not to
consider the unexpected highly superior attributes of the machine
of Claim 1 because it does not recite a particular level of
'high-voltage.'"
Upon review of Piasecki, we find nothing that suggests that
the specification therein defined "heavy" to include lighter
loads than those contemplated by the various declarations in the
way that appellant's specification defines "high voltage" to
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