Ex Parte Gorrell - Page 5



          Appeal No. 2005-0267                                                        
          Application No. 09/982,154                                                  

               The thrust of appellant's argument is that the myriad of               
          choices provided by the cited references for the various layers             
          of the high voltage cable affords no guidance for one of ordinary           
          skill in the art to select the specifically claimed structure.              
          It is submitted that "Appellant counts six different choices for            
          the core of the cable, three different choices for the first                
          layer, four different choices for the second layer, five                    
          different choices for the third layer, five different choices for           
          the fourth layer, and four different choices for the fifth layer"           
          (page 10 of principal brief, second paragraph).  Appellant                  
          concludes that by his calculation "these choices provide seventy-           
          two hundred different high voltage cable configurations that can            
          be made up from among these choices" (page 11 of principal brief,           
          penultimate paragraph).                                                     
               What is overlooked if not obscured by appellant's argument             
          is that all that is necessary to arrive at the high voltage cable           
          of claim 1 is to add an additional single layer to the high                 
          voltage cable of Hastings '827, and select conventional cable               
          materials for the features of the dependent claims.  It is well             
          settled that a selection of some from among many indiscriminately           
          from the prior art, including a selection from a list of                    

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