Appeal No. 96-3394 Page 4
Application No. 08/178,748
chromic oxide as an insulator layer coating, similar to that
used by Ichikawa, and for the teaching that other coatings
having similar characteristics may be employed. The examiner
also points to column 3, lines 43-49, of Kaseman for the
suggestion of selecting a material based on the amount of
conductivity desired, the examiner concluding that appellant’s
choice of a material is a “matter of choice in design” [answer-
page 5].
The problem with the examiner’s rationale is that while
Kaseman refers to choosing materials based on conductivity,
there is no suggestion whatsoever in either Kaseman or Ichikawa
to use the material explicitly claimed by appellant, i.e., ”a
thin layer of amorphous diamond-like carbon...” The only
disclosure of the use of this material for the claimed function
is in appellant’s own disclosure. For the examiner to conclude
that such would have been obvious, within the meaning of 35
U.S.C. 103, based on a nebulous disclosure by Kaseman of a
coating of “slightly conductive material,” would amount to
unsubstantiated speculation which can only be rooted in
improper hindsight gleaned from appellant’s own disclosure of a
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