Ex parte ECKHARD WOLFGANG et al. - Page 12

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

          layers 3, 2, 16, 17 and 1 of Potter are considered to be a                  
          structural equivalent to the claimed means for eliminating heat             
          [answer, page 4].  Appellants argue that Potter does not                    
          anticipate the claimed invention because there are four layers              
          between the Potter heat sink and the Potter diamond [brief, page            
          6].  The examiner responds that when the means for eliminating              
          heat is considered to include all of elements 3, 2, 16, 17 and 1            
          of Potter, then the carbon layer 4 of Potter is directly                    
          connected to layer 3 which meets the claim recitation [answer,              
          pages 8-9].                                                                 
          We observe first that the examiner’s initial theory of                      
          anticipation cannot be sustained.  The direct mounting of claim 8           
          does not permit an intervening layer as suggested by the                    
          examiner.  The first and second embodiments of appellants’                  
          invention (figures 2 and 3) show intervening layers, but are not            

          as being directly mounted.  Appellants do not suggest that                  
          mounting is direct until Figure 4 is described.  Appellants note            
          that “[t]he embodiment shown in Figure 4 differs from the                   
          embodiment shown in Figure 3 only in that the insulator layer               
          ISO4 is grown directly on the cooling member W4 and no connecting           


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