Ex parte Pradere

Board of Patent Appeals and Interferences

Aug 3, 1999

08178748 (B.P.A.I. Aug. 3, 1999)

Application for patent filed January 7, 1994. 1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was
not written for publication in a law journal and (2) is not binding
precedent of the Board.
Paper No. 26
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte PHILIPPE PRADERE
____________
Appeal No. 96-3394
Application No. 08/178,7481
____________
HEARD: July 15, 1999
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Before KRASS, FLEMING, and BARRY, Administrative Patent Judges.
KRASS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 6 through 12, all of the claims remaining in the
application.
Appeal No. 96-3394 Page 2
Application No. 08/178,748
The invention is directed to an image converter. More
particularly, glimmer from a surface of an insulating part
which supports electrodes is reduced, or eliminated, by
covering the insulating parts with a thin layer of amorphous
diamond-like carbon.
Independent claim 6 is reproduced as follows:
6. An image converter tube including a vacuum chamber
and within the vacuum chamber comprising:
an input screen including a scintillator and a
photocathode, for converting input X-rays into electrons;
an output screen for receiving the electrons generated by
the input screen;
an electronic optical unit for focusing the electrons onto
the output screen, the electronic optical unit comprising:
a plurality of electrodes;
a plurality of insulating parts fixing the plurality of
electrodes; and
a thin layer of amorphous diamond-like carbon formed to
cover the plurality of insulating parts.
The examiner relies on the following references:
Kaseman 4,001,618 Jan. 4,
1977
Ichikawa et al. (Ichikawa) 4,459,508 Jul. 10,
1984
Appeal No. 96-3394 Page 3
Application No. 08/178,748
In addition, the examiner relies on appellant’s admitted
prior art [APA] at pages 1-2 of the specification regarding the
use of a scintillator associated with a screen and a
photocathode for the purpose of converting X-rays to electrons.
Claims 6 through 12 stand rejected under 35 U.S.C. 103 as
unpatentable over Ichikawa in view of APA and further in view
of Kaseman.
Reference is made to the briefs and answer for the
respective positions of appellant and the examiner.
OPINION
We reverse.
We have carefully considered the evidence before us
including, inter alia, the arguments of appellant and the
examiner and we find ourselves in agreement with appellant that
the examiner has improperly based the obviousness rejection on
appellant’s own disclosure.
Independent claim 6 requires “a thin layer of amorphous
diamond-like carbon formed to cover the plurality of insulating
parts.” The examiner recognizes that neither Ichikawa nor APA
discloses this explicit claim limitation. The examiner turns
to Kaseman, citing column 3, lines 35-37, for the use of
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
Appeal No. 96-3394 Page 5
Application No. 08/178,748
thin layer of amorphous diamond-like carbon formed to cover the
plurality of insulating parts.
The examiner’s charge of “matter of choice in design” has
no credence here because, while the examiner contends that
appellant has offered no evidence of “criticality” for this
claimed limitation, the instant specification clearly indicates
why the use of this material has advantages over the prior art.
Page 11 of the specification indicates that a layer of
amorphous carbon deposited by a specific technique is employed
to get the low secondary electron emission rate, the
homogeneity and the very low conductivity sought by appellant.
Page 12 of the specification indicates that
Amorphous diamond-like carbon deposited in thin
layers by sputtering or by PECVD is perfectly
homogeneous and adheres to its support. It does
not generate any dust like chromium oxide paint.
Thus, the instant specification is full of advantages and
reasons, i.e., criticality, as the examiner calls it, as to why
appellant chooses to use amorphous diamond-like carbon.
Accordingly, the use of this material is more than a mere
design choice as alleged by the examiner.
Appeal No. 96-3394 Page 6
Application No. 08/178,748
None of the cited references discloses or suggests the
amorphous diamond-like carbon formed to cover the plurality of
insulating parts, as claimed.
Appeal No. 96-3394 Page 7
Application No. 08/178,748
Accordingly, the examiner’s decision rejecting claims 6
through 12 under 35 U.S.C. 103 is reversed.
REVERSED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
LANCE LEONARD BARRY )
Administrative Patent Judge )
EAK/jlb
Appeal No. 96-3394 Page 8
Application No. 08/178,748
OBLON, SPIVAK, McCLELLAND
MAIER AND NEUSTADT
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