Adam Michalik et al.

Patent Trials and Appeals Board

Jul 30, 2019

14652716 - (D) (P.T.A.B. Jul. 30, 2019)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/652,716 06/16/2015 Adam MICHALIK 04190-P0268A 7208
137670 7590 07/30/2019
ABB - Whitmyer IP Group LLC
600 Summer Street
Stamford, CT 06901
EXAMINER
HINSON, RONALD
ART UNIT PAPER NUMBER
2837
MAIL DATE DELIVERY MODE
07/30/2019 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ADAM MICHALIK, PATRICIA RICKETTS,
MASSIMO CARMIGNOTO, JAYRAM YADAVA, ROBERTO ZANNOL,
MILJENKO HRKAC, ALESSANDRO MATTOZZI, CLAIRE PITOIS,
EMMANOUIL LOGAKIS, HARALD MARTINI, ILARIO SCIAN,
ORLANDO GIRLANDA, RUDI VELTHUIS, and SPIROS TZAVALAS
___________

Appeal 2018-004280
Application 14/652,716
Technology Center 2800
____________

Before ST. JOHN COURTENAY III, THU A. DANG, and
JOHN A. EVANS, Administrative Patent Judges.

COURTENAY, Administrative Patent Judge.

DECISION ON APPEAL
Appellants1 appeal under 35 U.S.C. § 134(a) from the Examiner’s
Final Rejection of claims 1–20, which constitute all the claims pending in
this application. We have jurisdiction over the pending claims under
35 U.S.C. § 6(b). An oral hearing was conducted on July 3, 2019.
We affirm.

1 According to Appellants, the real party in interest is ABB Schweiz AG,
CH-5400 Baden, Switzerland. App. Br. 2.
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STATEMENT OF THE CASE 2
Disclosed embodiments of Appellants’ invention relate “to an
electrical transformer comprising an electrical insulator and a winding of an
electrical conductor around a core.” Spec. 1, ll. 2–3.

Representative Claim
1. An electrical transformer, comprising:

an electrical insulator and a winding of an electrical
conductor around a core, said insulator being an essentially non-
porous composite material comprising a resin matrix and up to
85% by weight of insulating fibres surrounded by the resin
matrix such that the composite material does not allow a liquid
to penetrate into or through the insulator, the composite material
having a maximum moisture content of less than 0.5% by weight
at 23°C and 50% relative humidity.
App. Br. 11 (Claims Appendix) (emphasis added regarding the disputed
limitations under 35 U.S.C. § 103).

Rejection
Claims 1–20 are rejected under 35 U.S.C. § 103 as being obvious over
the combined teachings and suggestions of Rolling et al. (US 6,980,076 B1,
issued Dec. 27, 2005) (“Rolling”) in view of Golner et al. (US 8,085,120 B2,
issued Dec. 27, 2011) (“Golner”). Final Act. 2.

2 We herein refer to the Final Office Action, mailed May 2, 2017 (“Final
Act.”); Appeal Brief, filed Sept. 1, 2017 (“App. Br.”); Examiner’s Answer,
mailed Jan. 25, 2018 (“Ans.”); and the Reply Brief, filed Mar. 13, 2018
(“Reply Br.”).
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Grouping of Claims
Based upon Appellants’ arguments (App. Br. 4–10; Reply Br. 2–4),
and our discretion under 37 C.F.R. § 41.37(c)(1)(iv), we decide the appeal of
the §103 rejection of claims 1–20 on the basis of representative claim 1.
Issue on Appeal
Did the Examiner err in rejecting claims 1–20, under 35 U.S.C. § 103,
as being obvious over the cited combination of Rolling and Golner?
ANALYSIS
We have considered all of Appellants’ arguments and any evidence
presented. We have reviewed Appellants’ arguments in the Briefs, the
Examiner’s obviousness rejection, and the Examiner’s responses to
Appellants’ arguments. Appellants do not proffer sufficient argument or
evidence to persuade us of error regarding the Examiner’s underlying factual
findings and ultimate legal conclusion of obviousness. In our analysis
below, we highlight and address specific findings and arguments for
emphasis.
The Examiner’s Findings
The Examiner finds the combination of Rolling and Golner teaches or
suggests the claim 1 limitation:
an electrical insulator and a winding of an electrical
conductor around a core, said insulator being an essentially
non-porous composite material comprising a resin matrix and
up to 85% by weight of insulating fibres surrounded by the resin
matrix such that the composite material does not allow a liquid
to penetrate into or through the insulator, the composite
material having a maximum moisture content of less than 0.5%
by weight at 23°C and 50% relative humidity.
(Emphasis added).
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In particular, the Examiner finds:
Regarding claims 1 and 14, Rolling et al.(Col 4,lines 35-
57 and figures 1-2) discloses an electrical insulator (120, 135,
150) and a winding of an electrical conductor (110/125) around
a core (105), said insulator being formed of an essentially non-
porous composite material comprising a resin matrix and up to
85% by weight of insulating fibres surrounded by the resin
matrix (see Col 4, lines 44-57) such that the composite does not
allow a liquid to penetrate into or through the insulator.
Final Act. 2.
The Examiner additionally finds: “Rolling et al. does not expressly
disclose[] wherein the composite material has a maximum moisture content
of less than 0.5% by weight at 23 °C and 50% relative humidity.” Final Act.
3.
Turning to the secondary reference, the Examiner finds “Golner et al.
(Col 1, lines 20-25) discloses wherein the composite material has a
maximum moisture content of less than 0.5% by weight.” Id.

Appellants’ Contentions
Appellants contest the Examiner’s findings, particularly regarding the
aforementioned “essentially non-porous composite material” limitation of
independent claim 1. Appellants contend:
Neither Golner nor Rolling discloses an insulator that is
“an essentially non-porous composite material” that “does not
allow a liquid to penetrate into or through the insulator,” as
recited by claim 1. In fact, both Golner and Rolling teach away
from the use of an insulator having the features recited by claim
1. Both Golner and Rolling teach the use of insulation materials
that are porous and intentionally designed to be impregnated with
fluid.
App. Br. 5 (emphasis added).
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The Examiner’s Answer
In response, the Examiner disagrees, and further explains the basis for
the rejection:
Rolling (Col 4, lines 44-57) discloses composite material
comprising a resin matrix and up to 85% by weight of insulating
fibres surrounded by the resin matrix such that the composite
does not allow a liquid to penetrate into or through the insulator.
By having a similar resin composition as the appellants claimed
invention one of ordinary skill in the art can reasonably conclude
that the composition is non-porous. The [A]ppellant[s’] point out
that since Col 5, lines 36-39 teaches that insulation material is
impregnated with a fluid then it does not teach a “non-porous
composite material that does not allow a liquid to penetrate into
or through” it as recited by the independent claims. Even though
the insulator of Rolling may allow[] itself to be impregnated with
a fluid; Rolling still reads on the claimed limitations.
Ans. 7 (emphasis added).
Appellants’ Response in the Reply Brief
However, Appellants disagree and respond in the Reply Brief:
[I]mportantly, [the disputed] limitation is not functional, but
further defines the properties of the non-porous material. While
the Examiner ignores this limitation in the rejection, in the
Response the Examiner states without any reasoning or support
that Rolling discloses “that the composite does not allow a liquid
to penetrate into or through the insulator.” (Ans. at 7-8.)
However, in fact, neither Golner or Rolling teach or suggest
the claimed “insulator being an essentially non-porous composite
material comprising a resin matrix and up to 85% by weight of
insulating fibres surrounded by the resin matrix such that the
composite material does not allow a liquid to penetrate into or
through the insulator.” This is true regardless of whether this
limitation is considered as requiring the material to not allow a
liquid to penetrate or not allow a liquid [] though.
Reply Br. 3 (emphasis omitted and added).
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ANALYSIS
Issue: Under 35 U.S.C. § 103, did the Examiner err by finding the
cited combination of Rolling and Golner teaches or suggests the disputed
limitation:
an electrical insulator and a winding of an electrical
conductor around a core, said insulator being an essentially
non-porous composite material comprising a resin matrix and
up to 85% by weight of insulating fibres surrounded by the resin
matrix such that the composite material does not allow a liquid
to penetrate into or through the insulator, the composite
material having a maximum moisture content of less than 0.5%
by weight at 23°C and 50% relative humidity[,]
within the meaning of independent claim 1?3 (Emphasis added). Claims
Appendix 11.
Claim Construction
As an initial matter of claim construction for the disputed claim
language, “an essentially non-porous composite material . . . [that] does
not allow a liquid to penetrate into or through the insulator,” we turn to
Appellants’ Specification for context.
That the composite material is essentially non-porous
implies that the material does not allow a liquid to penetrate
into or through the material via e.g. holes, channels, cracks or
the like, nor are there any pores (i.e. closed bubbles formed
during production of the composite material, which may
alternatively be called voids), at least no pores having a
diameter so large that there is a risk of partial discharges in any
such pores. Any pores in the composite material are thus too

3 We give the contested claim limitations the broadest reasonable
interpretation (BRI) consistent with the Specification. See In re Morris,
127 F.3d 1048, 1054 (Fed. Cir. 1997).

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small to allow breakdown in accordance with Paschen’s law.
The maximum pore diameter for avoiding partial discharges
depends e.g. on the voltage etc. In some embodiments pores are
acceptable provided that they have a pore diameter of at most
1 micrometre. Also, e.g. by virtue of being essentially non-
porous, the material does not take up moisture, as defined by
the composite material having a maximum moisture content of
less than 0.5% by weight at 23°C and 50% relative humidity.
Thus, the material does not swell/shrink and vary its thickness.
Further, the insulator material is a composite material
comprising a resin matrix and up to 60% by weight of
insulating fibres. The fibres reinforce the insulator material,
making it stronger and more resilient to forces and strain put on
it. The fibres are surrounded by or immersed in the resin matrix
which fixes the fibres in relation to each other, forming a solid,
non-porous and impermeable composite material e.g. in the
form of a solid block, cylinder or sheet. The low moisture
uptake and the absence of pores reduces the compressibility of
the insulator, making it suitable for e.g. spacers.
The resin matrix is made from a resin which is heat
resistant and has a low moisture uptake. Examples of such
resins include a synthetic thermoplastic compound chosen
from the group consisting of polyethylene terephthalate (PET),
polyphenylene sulphide (PPS), polyetherimide (PEI),
polyethylene naphtalate (PEN), polybutylene terephthalate
(PBT), polyphenylene ether (PPE) and polyethersulphone
(PES), Polyether ether ketone (PEEK) and thermoset resins of
epoxy or unsaturated polyester, and any mixture thereof.
Spec. 3, l. 28 — 4, l. 26 (emphasis added). See Specification: International
Publication Number WO 2014/095399 Al; PCT/EP2013/075686.

We note the aforementioned “essentially non-porous composite
material” limitation of claim 1 is recited in essentially identical form in
remaining independent method claim 14 on appeal.
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As an additional issue of claim construction, we particularly note the
Examiner considers the following claim 1 language as a functional
limitation: “the composite material does not allow for a liquid to penetrate
into or through the insulator.” See Final Act. 3. In support, the Examiner
cites to In re Schreiber (128 F.3d 1473, 1477–78 (Fed. Cir. 1997)), and
concludes: “In order to be given patentable weight, a functional recitation
must be supported by recitation in the claim of sufficient structure to warrant
the presence of the functional language.” Final Act. 3.
However, we concur with Appellants (Reply Br. 3), and conclude that
under a broad but reasonable interpretation consistent with the Specification
(e.g., 3, l. 28–4, l. 26), the disputed negative limitation (“the composite
material does not allow for a liquid to penetrate into or through the
insulator”) more accurately describes a property of the composite material,
and is not a functional limitation, per se. Claim 1 (emphasis added).
Therefore, the dispositive issue on appeal turns upon whether the
scope of the claimed “insulator being an essentially non-porous composite
material comprising a resin matrix and up to 85% by weight of insulating
fibres surrounded by the resin matrix” (claim 1) encompasses the
corresponding structures relied upon by the Examiner the cited combination
of references.

The Insulating “Fibres” Recited in Claim 1
Regarding the “up to 85% by weight” range of the claimed “insulating
fibres” (British spelling), Rolling teaches an embodiment which uses
synthetic (non-porous) fibers that are made of polyphenylene sulfide, or
other similar thermoplastic compounds:
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The insulation may be made using a range of content of wood
pulp fiber, synthetic fibers and binder. The synthetic fibers may
be aramid, syndiotactic polystyrene, polyphenylsulfone,
polyphthalamide, or polyphenylene sulfide fibers that are
present in an amount between approximately 2 and 25 weight
percent of the mixture, more particularly between
approximately 5 and 20 weight percent, and most particularly
between approximately 7 and 15 weight percent.
Rolling, col. 4, ll. 36–44.4
Thus, we find Appellants’ “up to 85% by weight” range of the claimed
“insulating fibres” (i.e., at least covering the range 0.01% to 85% by weight)
overlaps each of the disclosed ranges in Rolling (e.g., “between
approximately 2 and 25 weight percent of the mixture, more particularly
between approximately 5 and 20 weight percent, and most particularly
between approximately 7 and 15 weight percent.”). Id.
Our reviewing court provides applicable guidance: “In cases
involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima
facie case of obviousness. We have also held that a prima facie case of

4 An obviousness inquiry is not limited to the prior art’s preferred
embodiment. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1370
(Fed. Cir. 2007). Moreover, “[c]ombining two embodiments disclosed
adjacent to each other in a prior art patent does not require a leap of
inventiveness.” Boston Scientific Scimed, Inc. v. Cordis Corp., 554 F.3d
982, 991 (Fed. Cir. 2009). “[I]n a section 103 inquiry, ‘the fact that a
specific [embodiment] is taught to be preferred is not controlling, since all
disclosures of the prior art, including unpreferred embodiments, must be
considered.’” Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed.
Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)).

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obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties.” In re Peterson, 315 F.3d 1325,
1329 (Fed. Cir. 2003) (emphasis added).

The Claimed Negative limitation of
Not Allowing a Liquid to Penetrate Through the Insulator

Regarding Appellants’ argument that both Rolling and Golner are
intentionally designed to be “impregnated with fluid” (App. Br. 5), we note
Appellants are referring to Rolling, col. 5, ll. 34–40:
When used in transformer 100, or other fluid-filled electrical
devices, the paper thermally ages, which causes the wood pulp
fiber component of the paper to become brittle and lose
mechanical strength. Even though the wood pulp fiber becomes
brittle, it continues to have good dielectric properties so long as
the paper remains intact and impregnated with fluid.
(emphasis added).
See also Golner, col. 2, ll. 19–21: “The method also includes
impregnating the composite structure with a cooling fluid pursuant to the
positioning step.” (emphasis added).
We again turn to Appellants’ Specification for context, and find the
claimed insulator is described as being substantially impregnable and/ or
impermeable to the fluid:
As discussed above, the electrical transformer may be fluid-
filled, for improved insulation and/ or heat exchange. The fluid
may e.g. be mineral oil, silicon oil, synthetic ester, natural ester
or a gas. For high temperature applications, it may be
convenient to use an ester oil, e.g. a natural or synthetic ester
oil. The insulator is preferably resistant to the fluid, i.e. is not
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dissolved by the fluid. Thus, the insulator should substantially
not be able to be impregnated by the fluid, i.e. it should be
substantially impregnable and/ or impermeable to the fluid.
Preferably, the insulating material and the fluid should not
affect each other's properties, and should not react with each
other.
Spec. 6, ll. 12–21.
Under BRI, we construe the claimed “liquid” that is not allowed to
penetrate into or through the insulator as encompassing both oil and water.
We construe the claimed maximum “moisture” as being limited to water
moisture. See Claim 1. In accordance with the description in the
Specification (Spec. 6, ll. 13–17), we observe the transformer in Appellants’
Figure 1 is depicted as being at least partially filled with oil (see upper left of
Figure 1: “air / oil”). See Spec. 6, ll. 13–16: “The fluid may e.g. be
mineral oil, silicon oil, synthetic ester, natural ester or a gas. For high
temperature applications, it may be convenient to use an ester oil, e.g. a
natural or synthetic ester oil.”
Similarly, Rolling teaches an oil-filled transformer: “The dielectric
fluid may be a mineral oil, silicone oil, a natural or synthetic ester oil, or a
hydrocarbon fluid.” Col. 2, ll. 13–15.
Golner also teaches an oil-cooled transformer: “In operation, a cooling
fluid (e.g., an electrical or dielectric insulating fluid such as, for example, a
napthenic mineral oil, a paraffinic-based mineral oil including isoparaffins,
synthetic esters and natural esters (e.g., FR3™)) flows between the
transformer components 12, 14, 16, 18, 20, 22, 24 and is in contact with the
above-mentioned insulation, typically with at least some flow therethrough
as well.” Col. 3, ll. 41–46.

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After further review of the record, we note Appellants’ “resin matrix”
(claim 1) is described as being “made from a resin which is heat resistant
and has a low moisture uptake.” Spec. 4, ll. 20–21 (emphasis added). The
Specification further describes: “The insulator is preferably resistant to the
fluid, i.e. is not dissolved by the fluid.” Spec. 6, ll. 16–17.
Appellants’ Specification describes several specific examples of such
resins that may “include a synthetic thermoplastic compound chosen from
the group consisting of polyethylene terephthalate (PET), [and]
polyphenylene sulphide (PPS),” inter alia. Spec. 4, ll. 21–23 (emphasis
added). 5 (We note “polyphenylene sulphide” is the British English spelling
of “polyphenylene sulfide.”).
We are further informed by comparing Appellants’ broader
independent claim 1 with dependent claim 2, which depends directly from
claim 1. Claim 2 further limits the “resin matrix” of claim 1 that forms the
“non-porous composite material” (containing insulating fibres) to specific
types of synthetic thermoplastic compounds, including, inter alia,
“polyphenylene sulphide (PPS).” Claim 2. Appellants’ claim dependency

5 We note the scope of the claims on appeal, at a minimum, at least covers
the corresponding supporting embodiment(s) described in the Specification.
We emphasize, however, that under a broad but reasonable interpretation of
the claims in light of the Specification, the scope of the claims is not limited
to the preferred embodiments described in the Specification: “[A]lthough
the specification often describes very specific embodiments of the invention,
we have repeatedly warned against confining the claims to those
embodiments .... [C]laims may embrace ‘different subject matter than is
illustrated in the specific embodiments in the specification.’” Phillips v.
AWH Corp., 415 F.3d 1303, 1323 (Fed. Cir. 2005) (en bane) (internal
citations omitted).

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and supporting Specification (4, ll. 21–23) evidences that PPS is a species of
the genus of “non-porous composite materials” recited in claim 1. The
Examiner relies principally on Golner to teach or suggest the limitations of
dependent claim 2. See Final Act. 4.
Turning to the evidence relied upon by the Examiner, we particularly
find that Rolling teaches an embodiment (col. 1, ll. 41–45; col. 4, ll. 36–39)
that uses the exact same polyphenylene sulfide thermoplastic compound
(PPS) for synthetic fibers, as does Golner (see col. 4, ll. 45–48, col. 7, l. 26–
28). Significantly, Golner further describes the use of PPS to make the solid
binder material 34 (i.e., resin):
[T]he binder material 34 illustrated in FIGS. 2-4 includes at
least one of an amorphous and a crystalline thermoplastic
material that is mechanically and chemically stable when in
contact with the above-mentioned cooling fluid. For example,
according to certain embodiments of the present invention, the
solid binder material 34 includes at least one of a copolymer of
polyethylene terephthalate (CoPET), polybutylene
terephthalate (PBT) and undrawn polyphenylene sulphide
(PPS).
Golner, col. 4, l. 63 — col. 5, l. 4 (emphasis added).
Thus, when we read Appellants’ claimed “resin matrix” (that
according to one described embodiment is polyphenylene sulphide (Spec.
4, l. 23), on Golner’s binding material 34, that according to one described
embodiment is also polyphenylene sulphide (Golner, col. 5, ll. 1–4), we
find a preponderance of the evidence supports the Examiner’s finding that
“[b]y having a similar resin composition as the appellants claimed invention
one of ordinary skill in the art can reasonably conclude that the composition
is non-porous.” Ans. 7 (emphasis added).
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We find this to be true regarding Golner’s binding material 34 and
fibers 30 (i.e., “composite material” — claim 1), even if the paper portions
of Rolling’s insulator are impregnated (i.e., saturated) with oil, because
Golner teaches a transformer that does not use paper as an insulator.6
Instead, Golner’s transformer “insulation system includes a plurality of
fibers that are bound together by a solid binding agent.” Golner, Abstract;
see also Figs. 2–3.
Given this evidence, we find Golner’s PPS binder (“resin”) having
synthetic fibers made of PPS or a similar thermoplastic material7 (forming a
“resin matrix”) would not allow liquid (oil and water moisture) to penetrate
into or through the actual composite PPS synthetic binder and fiber portion
of the insulator, although such liquids may flow around and between
Golner’s binder and fiber structures, as they are depicted in Figures 2 and 3.
See also Golner, col. 3, l. 66— col. 4, l. 11; col. 4, l. 63 — col. 5, l. 4.
Although Golner’s “cooling fluid is capable of impregnating and, at
least to some extent, of flowing through the composite structure 26” (col. 4,
ll. 7–11), this is only because “the binder material 34 does not form a
continuous matrix,” as shown in Golner’s Figures 2 and 3. See Golner, col.
4, l. 8.

6 “[T]he question under 35 USC 103 is not merely what the references
expressly teach but what they would have suggested to one of ordinary skill
in the art at the time the invention was made.” Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545
F.2d 747, 750 (CCPA 1976)) (emphasis added); see also MPEP § 2123.

7 Golner describes: “For example, some of the illustrated base fibers include
one or more of polyethylene terephthalate (PET), polyphenylene sulphide
(PPS), polyetherimide (PEI), polyethylene naphthalate (PEN) and
polyethersulfone (PES).” Col. 4, ll. 46–49 (emphasis added).
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The actual composite PPS insulator does not allow a liquid to
penetrate into or through the PPS itself, due to the essentially non-porous
property of PPS. Cf. with Appellants’ claim 2 in which the synthetic
thermoplastic PPS compound is a particular species of the claimed genus of
essentially non-porous composite materials (comprising a resin matrix) of
independent claim 1, from which claim 2 directly depends.
Although Golner’s fibers may be small (according to one embodiment
on the order of microns in diameter and millimeters or centimeters in
length), Golner describes that larger dimensions are within the scope of the
invention. Col. 3, l. 66 — col. 4, l. 11. We emphasize that Appellants’
claim 1 does not specify any particular size dimension for the “insulator
being an essentially non-porous composite material comprising a resin
matrix and up to 85% by weight of insulating fibres surrounded by the resin
matrix such that the composite material does not allow a liquid to penetrate
into or through the insulator.”

Maximum Moisture Content
Regarding the additional limitation “the composite material having a
maximum moisture content of less than 0.5% by weight at 23°C and 50%
relative humidity” (claim 1), as noted above, the Examiner found: “Golner et
al. (Col 1, lines 20-25) discloses wherein the composite material has a
maximum moisture content of less than 0.5% by weight” (Final Act. 3).
Golner expressly teaches: “In order to operate, currently available
transformers typically include insulation materials that have a moisture
content of less than 0.5% by weight.” Col. 1, ll. 22–24 (emphasis added).
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We emphasize that the Examiner’s rejection is based upon the combined
teachings and suggestions of the cited references.
Regarding the claimed temperature and humidity point, we interpret
“23° C and 50% relative humidity” under BRI as merely being
representative of a nominal room temperature (23°C = 73.4°F) and
nominal humidity (50% relative humidity), and not as a critical
temperature or humidity point within a range. Claim 1.
Nevertheless, Appellants urge that both the Rolling and Golner
references “teach away” from the claimed invention on appeal: “In fact, both
Golner and Rolling teach away from the use of an insulator having the
features recited by claim 1. Both Golner and Rolling teach the use of
insulation materials that are porous and intentionally designed to be
impregnated with fluid.” App. Br. 5.
However, we find Appellants’ “teaching away” argument unavailing,
because an embodiment of Appellants’ claimed composite material is made
from polyphenylene sulphide (Spec. 4, l. 23), and because Golner also
teaches an embodiment of binding material 34 and fibers 30 (i.e.,“composite
material” — claim 1) that can be made with polyphenylene sulphide, or
another synthetic thermoplastic compound having similar properties. See
Golner, col. 4, l. 63 — col. 5, l. 4. As discussed above, both Rolling and
Golner teach an embodiment in which PPS (or another similar
thermoplastic) is used for the fiber portion.
Teaching an alternative or equivalent method (i.e., of using PPS as a
resin binder in a transformer), does not teach away from the use of a claimed
method. In re Dunn, 349 F.2d 433, 438 (CCPA 1965) (emphasis added).
(Independent claim 14 is a method claim). Moreover, Appellants’
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transformer is also filled with oil as a cooling agent, as discussed above. See
Spec. Fig. 1.
Therefore, on this record, and based upon a preponderance of the
evidence, Appellants have not persuaded us the Examiner erred in
concluding that Appellants’ independent claims 1 and 14 are obvious over
the cited combination of Rolling and Golner.
Accordingly, we sustain the Examiner’s obviousness rejection of
independent representative claim 1. We note independent method claim 14
recites similar limitations. Therefore, claim 14 and all remaining grouped
dependent claims 2–13 and 15–20 (not argued separately), fall with
representative independent claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
Accordingly, we sustain the Examiner’s obviousness rejection of all
claims 1–20 on appeal.

CONCLUSION
The Examiner did not err in rejecting claims 1–20, as being obvious
under 35 U.S.C. § 103, over the combined teachings and suggestions of
Rolling and Golner.

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DECISION
We affirm the Examiner’s decision rejecting claims 1–20 under 35
U.S.C. § 103.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). See
37 C.F.R. § 41.50(f).
AFFIRMED