Ex parte ROBERT E. FONTANA, et al. - Page 5




          Appeal No. 96-2513                                                          
          Application 08/037,064                                                      

               dramatically (layer of diamond particles and a layer of                
               metal matrix).                                                         
          The wear rate is rapid before the embedded diamond particles have           
          been reached, and then the wear rate drops off dramatically since           
          "[t]he rate of wear of the diamond is close to zero" (Cullen at             
          2635).                                                                      
               But the problem is that embedded diamond particles and the             
          metal matrix do not form a plasma-enhanced chemical vapor                   
          deposited or sputter-deposited homogenous inner and outer layer.            
          The examiner specifically acknowledged in Paper No. 6, page 3,              
          lines 14-15, that Cullen discloses "substantially one                       
          heterogenous layer" (Emphasis added).  Moreover, the examiner has           
          pointed to no evidence that Cullen's metal matrix and diamond               
          particles are formed by plasma-enhanced chemical vapor deposition           
          or sputtering.  The examiner has failed to demonstrate a                    
          reasonable motivation or suggestion from the prior art to form              
          the contact pad 34 of the EP Reference as two separate layers,              
          each being homogenous and plasma-enhanced chemical vapor                    
          deposited or sputter-deposited.  We note further that zero or               
          minimum abrasion appears to be the goal of Cullen, rather than              
          two levels of wear.  The fact that an initial rapid wear level              
          exists appears to be mere incidental and due to the process used            
          for embedding diamond particles in the metal matrix.                        

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