Ex parte ECKHARD WOLFGANG et al. - Page 4




          Appeal No. 95-0543                                                          
          Application 08/008,734                                                      


          opposite conclusion with respect to claims 16 and 17.                       
          Accordingly, we affirm-in-part.                                             



          We consider first the rejection of claim 1 under 35                         
          U.S.C.  102(b) as being anticipated by the disclosure of Potter.           
          Anticipation is established only when a single prior art                    
          reference discloses, expressly or under the principles of                   
          inherency, each and every element of a claimed invention as well            
          as disclosing structure which is capable of performing the                  
          recited functional limitations.  RCA Corp. v. Applied Digital               
          Data Systems, Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed.            
          Cir.); cert. dismissed, 468 U.S. 1228 (1984); W.L. Gore and                 
          Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ            
          303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).               
          The examiner has supported this rejection by reading                        
          claim 1 on the Potter disclosure [answer, pages 3-4].  Appellants           
          argue that Potter teaches that there are four layers between the            
          heat sink and the diamond layer.  According to appellants, this             
          teaching of Potter cannot meet the claim 1 recitation of “wherein           
          only one of said connecting layers is between said means for                
          eliminating heat and said electrically insulating and thermally             

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