Appeal No. 19987-3176 Page 5
Application No. 08/388,788
diamond of Chen reasonably corresponds to the claimed apparatus
including a mandrel that has two deposition surfaces with
different properties. As noted by appellants in the briefs, each
deposition surface of a mandrel suitable for diamond deposition
is an exposed surface of that mandrel, not an interior unexposed
layer. Here, the examiner does not seem to have taken that basic
understanding of the recited limitations of the claimed apparatus
into account. Rather, the examiner refers to column 2, lines 30-
55 of Chen and suggests that an intermediate layer disclosed
therein somehow corresponds to one of the claimed mandrel
deposition surfaces. Hence, the examiner’s determinations
regarding the correspondence of the prior art teachings and the
claimed subject matter appear to be premised on an incorrect
assessment of what is being claimed.
Accordingly, we will not sustain the examiner’s § 102
rejection of claim 1.
Rejections under 35 U.S.C. § 103
In rejecting claims 1 and 5 under § 103(a) over Chen, in
rejecting claims 2 and 4 under § 103(a) over Chen and Smith, in
rejecting claims 1, 4-10 and 12 under § 103(a) over Anno and in
rejecting claims 1, 2 and 6-11 under § 103(a) over Weber, the
examiner has not shown how the applied prior art would have
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