Appeal No. 2000-0049
Application 08/826,209
Taniguchi discloses a mold for press molding a glass-
containing optical element, wherein at least the molding face
of the mold matrix is coated with a diamond film having a
(100) oriented face which is flattened by polishing or etching
such that has a low surface roughness (col. 4, lines 4-9 and
53-56). The disclosure by Taniguchi relied upon by the
examiner (answer, page 4) is that “[i]t is well known in the
art that the (100) face of diamond is the softest of the
(100), (111) and (110) faces” (col. 4, lines 51-53).
The examiner argues that “when it is desired to sacrifice
the high peeling resistance and long life of the cutting tool
in order to obtain a smooth outer surface of the cutting tool
as suggested by Taniguchi et al. it would have been obvious to
one of ordinary skill in the art to have switched the order of
the first and second diamond layer in Okamura et al.’s process
with the expected success” (answer, page 4).2
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
The examiner does not discuss the embodiment recited in the appellant’s claim 7.2
4
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