Appeal No. 2004-1879
Application No. 9/915,528
are used to solve a very specific problem associated with cables
used in magnetic motors. The cables of Wargotz, however, are
disclosed as being used as underground power cables. There is no
indication that the power cables of Wargotz have any application
associated with magnetic motors. Therefore, there is no basis
for the artisan to modify the cable of Wargotz with the additives
of McGregor because the problem described in McGregor is not
present in the Wargotz application. The examiner’s proposed
combination can only logically be based on an attempt to
reconstruct the claimed invention in hindsight.
We now consider the rejection of claims 4-7 based on
Wargotz, McGregor and Livingston. These claims stand or fall
together as a single group [brief, page 4]. The examiner has
indicated how he finds the invention of these claims to be
unpatentable over the applied prior art [answer, pages 5-6]. In
addition to the arguments considered above, appellants argue that
Livingston does not teach the selection of materials based on
tensile strength. Appellants argue that there is no motivation
to combine the teachings in the manner proposed by the examiner
[brief, pages 12-14]. The examiner responds that the materials
taught by Livingston have different tensile strengths as claimed
[answer, pages 9-10].
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