Ex parte ECKHARD WOLFGANG et al. - Page 7




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


          invention as recited in claim 1.  Therefore, we sustain the                 
          rejection of claim 1 as anticipated by the disclosure of Potter.            
          Claims 9 and 10 depend from claim 1 and recite that the                     
          insulating and conducting layer of claim 1 is polycrystalline               
          carbon and monocrystalline carbon, respectively.  The examiner              
          has rejected these claims under 35 U.S.C.  103 as unpatentable             
          over the teachings of Potter.  According to the examiner, the               
          diamond disclosed in Potter is either monocrystalline or                    


          polycrystalline carbon.  The examiner provides a reasoned                   
          analysis as to why the artisan would have found it obvious to use           
          either form of crystalline carbon [answer, pages 5-6].                      
          Appellants argue that the type IIa diamond of Potter is believed            
          to be a monocrystalline carbon, and there is no suggestion in               
          Potter to use a polycrystalline carbon [brief, page 8].                     
          Although we would have preferred that the examiner cite a                   
          reference in support of the position that a polycrystalline                 
          carbon would have been obvious to the artisan in view of Potter,            
          we nevertheless find that the record supports the examiner’s                
          finding of this fact.  Every crystalline carbon is presumably               
          either monocrystalline or polycrystalline carbon.  The scope of             
          claim 9 includes any polycrystalline carbon.  Given that a                  

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