Appeal No. 1996-0073
Application 08/278,688
B. Claim 8
Claim 8 is also directed to a method of making an article. The method comprises
thermally conductively mounting a heat generating means on a polycrystalline diamond film
of thickness t. Prior to mounting the heat generating means on the diamond film, the
diamond film of thickness t is prepared by (1) providing a polycrystalline diamond film of
thickness greater than t having relatively fine-grained diamond material adjacent to a first
major surface of the diamond film, and relatively coarse-grained diamond material
adjacent to a second major surface of the diamond film and (2) removing a quantity of
diamond material from the diamond film such that the diamond film of thickness t results, at
least a part of the removed material being relatively fine-grained diamond material
adjacent to the first major surface.
Thus, claim 8 is of a different scope than claim 1. Nevertheless, the examiner
appears to reject claim 8 using the same rationale as used in the rejection of claim 1 and
adding the following (Answer, p. 5):
It is the examiner's position that it would have been obvious to one of
ordinary skill in the art to contact a metal to any diamond product with the
expectation of obtaining the known benefits.
Appellants argue that "[n]othing in '904 suggests the subject matter of claim 8"
(Brief, p. 9). Clearly, the examiner has failed to point to any teaching in GB '904A which
would have suggested the invention of claim 8 to one having ordinary skill in the art. For
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