Ex Parte TAKEUCHI - Page 8



         Appeal No. 2004-1908                                                       
         Application No. 09/176,374                                 Page 8          

         bending the electrodes, it is our view that the examiner has not           
         fairly explained why the teachings of Takeuchi in combination              
         with Machida would have led one of ordinary skill in the art to            
         the examiner’s proposed modification, on this record.                      
              From our perspective, the particularly identified teachings           
         of Takeuchi regarding the use of a flat sided mandrel and the              
         formation of a prismatic shaped cell, while obviously applicable           
         to the cell of Takeuchi, have not been shown by the examiner as            
         suggesting a modification of Machida’s specific cell or method of          
         making same in a manner so as to arrive at the here claimed                
         subject matter.                                                            
              Moreover, the examiner has not fairly addressed the                   
         specifics of each of appellant’s claims and each of the applied            
         references in explaining how the teachings of Takeuchi would have          
         suggested particular modification(s) of Machida in a manner so as          
         result in appellant’s claimed subject matter with a reasonable             
         expectation of success in so doing.                                        
              For example, appellant’s claim 1 requires a method wherein            
         the longer electrode is first folded on itself about a                     
         substantially rectangular cross-section mandrel having opposing            
         surfaces so that a separator on the longer electrode contacts              
         both of the oppositely facing surfaces of the mandrel.  Even if            





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