Appeal No. 2005-0235 8
Application No. 09/969,291
would have motivated one of ordinary skill in the art to employ the claimed multi-layer
insulation coatings described in Tatematsu, in lieu of the polyamideimide insulation
coating, as an insulation for the admittedly known electric conductor discussed above,
especially since the problem associated with the effect of welding heat on an insulation
coating is well known. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed.
Cir. 1996)(The motivation to combine the prior art references need not be identical to that
of the appellant.); In re Beattie, 974 F.2d 1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir.
1992)(“As long as some motivation or suggestion to combine the references is provided by
the prior art taken as a whole, the law does not require that the references be combined
for the reasons contemplated by the inventor.”).
Relying on In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), the
appellant argues that Tatematsu is directed to an environment different from that of the
admitted prior art and, therefore, cannot be properly combined with the admitted prior art.
See the Brief, page 6. However, as indicated supra, both the admitted prior art and
Tatematsu are directed to an insulation of an electrical conductor used in the same
environment, e.g., a motor or a generator. As also indicated supra, Tatematsu teaches
improving the properties of an insulation coating of an electrical conductor, including those
relevant to the insulation coating of the admittedly known electric conductor. Thus, we
determine that the appellant’s reliance on Jones is completely misplaced for the factual
findings and conclusions set forth above.
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