Ex parte ECKHARD WOLFGANG et al. - Page 14




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


          structural equivalence, the examiner has ignored the specific               
          disclosure of being “mounted directly,” and has done precisely              
          the opposite thing from that disclosed.  That is, we do not see             
          how the presence of layers 3, 2, 16 and 17 can be said to be                
          structurally equivalent to a connection which forbids the                   
          presence of these intervening layers.  In other words, the                  
          presence of certain structure is not structurally equivalent to             
          the required absence of that structure.                                     
          Since we find the examiner’s interpretation of claim 8                      
          under 35 U.S.C.  112 to be unsupported by the record in this               
          case, we conclude that claim 8 is not anticipated by the                    
          disclosure of Potter in the manner indicated by the examiner.               
          Therefore, we do not sustain the rejection of claim 8.                      
          Claims 16 and 17 depend from claim 8 and recite that the                    
          insulating and conducting layer of claim 8 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 for reasons discussed above.  Even             


          though these claims depend from claim 8 and the rejection of                
          claim 8 as anticipated by Potter has not been sustained, we must            



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