Ex parte John L. White

Board of Patent Appeals and Interferences

Oct 28, 1997

07796932 (B.P.A.I. Oct. 28, 1997)

Application for patent filed November 25, 1991. 1
According to appellant, this application is a continuation-in-
part of Application 07/611,792, filed November 13, 1990, now
abandoned.
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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journal and (2) is not binding precedent of the Board.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. 25
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte JOHN L. WHITE
________________
Appeal No. 94-3737
Application 07/796,9321
________________
ON BRIEF
________________
Before KIMLIN, WEIFFENBACH and PAK, Administrative Patent Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-20,
all the claims in the present application. Claim 1 is
illustrative:
1. In a process for the production of synthetic diamonds
wherein silicon carbide as the sole non-diamondaceous source of
carbon is heated at superatmospheric pressure while in the
diamond-stable region of the pressure-temperature diamond-
graphite phase diagram for carbon under conditions which
Appeal No. 94-3737
Application 07/796,932
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separates the silicon atoms of the silicon carbide from the
carbon atoms thereof and the carbon atoms are converted to
synthetic diamond, the thus-produced synthetic diamond is cooled
to ambient temperature while it is maintained in the diamond
stable region of the diamond graphite phase diagram; and the
thus-produced synthetic diamond is isolated from the reaction
product; the improvement which comprises heating the silicon
carbide to a temperature of up to 1,200EC but below the
temperature at which a non-diamondaceous form of elemental carbon
is converted to synthetic diamond under the conditions employed,
in a matrix which contains a reactant which chemically reacts
selectively with the silicon atoms of the silicon carbide and
which forms a frangible reaction product when cooled, whereby the
carbon atoms which are thus separated from the silicon carbide
are converted to synthetic diamond at a temperature below that
required to convert elemental carbon to synthetic diamond under
the conditions employed; and isolating the synthetic diamond from
the frangible reaction product by physical means.
In the rejection of the appealed claims, the examiner relies
upon the following references:
Jurewicz et al. 5,128,080 July 7, 1992
(Jurewicz) (filed Aug. 30, 1990)
Shipton 971,943 Oct. 7, 1964
(Great Britain patent specification)
Appellant’s claimed invention is directed to a process for
producing synthetic diamonds which comprises heating silicon
carbide in a matrix which contains a material that chemically
reacts with the silicon atoms of the silicon carbide. The
reacting material can be, inter alia, a metal oxide, a metal salt
or a metal hydroxide.
Page 1 of appellant’s specification acknowledges that a
commercial method developed in the 1950s by General Electric
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Application 07/796,932
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Company is employed by the prior art for synthesizing diamonds
from, as a starting material, a non-diamondaceous form of
elemental carbon. According to appellant, this commercial method
employs ultra high temperature and ultra high pressure.
Appellant states at page 4 of the specification that an essential
aspect of the present invention is that the disassociation of the
silicon carbide is performed in the absence of other sources of
non-diamondaceous elemental carbon, which distinguishes
appellant’s process dramatically from those in which a source of
non-diamondaceous form of elemental carbon is essential to the
process. We are told that the General Electric process and
another patented process require both silicon carbide and a
fluorocarbon, whereas still another patented process employs
amorphous carbon in combination with silicon carbide. According
to page 5 of the specification, “[t]he process of this invention
is conducted at a temperature/pressure relationship below that
required to convert non-diamondaceous elemental carbon, i.e.,
amorphous carbon or graphite, to the diamond form.”
Appealed claims 1-20 stand finally rejected under 35 U.S.C.
§ 112, first paragraph, as being based upon a specification that
is objected to by the examiner. Appealed claims 1-20 also stand
finally rejected under 35 U.S.C. § 112, first and second
paragraphs. In addition, claims 1-4 and 14-16 stand finally
Appeal No. 94-3737
Application 07/796,932
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rejected under 35 U.S.C. § 103 as being unpatentable over
Shipton.
Upon careful consideration of the opposing arguments
presented on appeal, we will not sustain the examiner’s
rejections for essentially those reasons expressed by appellant.
We consider first the examiner’s rejection of the appealed
claims under 35 U.S.C. § 112, first paragraph, as being based
upon an objectionable specification. The examiner finds
confusion “as to when ‘elemental carbon’ intends to be ‘graphite’
versus ‘carbon atoms’” (page 4 of Answer). However, page 5 of
the specification, lines 8-11, defines non-diamondaceous
elemental carbon as amorphous carbon or graphite, whereas the
nascent carbon atoms described at page 8 of specification, line
7, are those “carbon atoms” that are formed into diamond by
appellant’s process.
Regarding the examiner’s objection that the specification
does not give “examples of materials which can be used at 800EC
or less,” appellant correctly points out that not all embodiments
of a disclosed invention need be exemplified to satisfy § 112,
first paragraph.
We do not understand the examiner’s objection that “Example
1 does not illustrate the invention as originally filed since it
is at 1200EC not below it” (page 4 of Answer). As noted by
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Application 07/796,932
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appellant, Example 1, which performs the process at 1200EC, is
part of the original specification. We also agree with appellant
that it is clear from the present specification that Examples
3-14 form synthetic diamond as a product.
We also do not agree with the examiner that the language
“superatmospheric pressure” of claim 1 is not supported by the
original specification since the language “encompasses pressures
slightly above atmospheric which are clearly not contemplated” by
appellant (page 4 of Answer). It is well settled that claim
language should not be read in a vacuum but in light of the
accompanying specification and state of the prior art. Since it
is clear to the examiner, upon reading appellant’s specification,
that pressures slightly above atmospheric are not part of the
disclosed invention, it is reasonable to conclude that one of
ordinary skill in the art would not interpret “superatmospheric
pressure” of claim 1 as including pressure slightly above
atmospheric. It must be borne in mind that it is not the
function of the claims to specifically exclude possible
inoperable embodiments. In re Dinh-Nguyen, 492 F.2d 856, 858-59,
181 USPQ 46, 48 (CCPA 1974). See also In re Kamal, 398 F.2d 867,
872, 158 USPQ 320, 324 (CCPA 1968) and In re Sarett, 327 F.2d
1005, 1019, 140 USPQ 474, 486 (CCPA 1964).
Appeal No. 94-3737
Application 07/796,932
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We now turn to the rejection of the appealed claims under
35 U.S.C. § 112, first and second paragraphs. According to the
examiner, “the claimed invention is not described in such full,
clear, concise and exact terms as to enable any person skilled in
the art to make and use the same, and/or for failing to
particularly point out and distinctly claim the subject matter
which applicant regards as the invention” (page 5 of Answer).
According to the examiner, appellant’s specification does not
enable one of ordinary skill in the art to make a diamond
because, in the words of the examiner, “the carbon separated from
the SiC is nascent atomic (‘elemental’) carbon and claim 1 states
that the temperature is not sufficiently high to permit diamond
formation from ‘non-diamondaceous form of elemental carbon’
(which clearly describes nascent carbon atoms)” (page 5 of
Answer). We can understand the examiner’s criticism if claim 1
on appeal is not read in light of the specification. However,
the specification discloses that the “non-diamondaceous form of
elemental carbon” that is not synthesized into diamond at the
claimed temperature is amorphous carbon or graphite (page 5 of
specification, lines 8-11). On the other hand, the form of
elemental carbon that is transformed into diamond by the claimed
process is the nascent atomic carbon resulting from the reaction
of silicon carbide and the reactant (page 8 of specification,
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lines 5 et seq.). Although the examiner states “[t]he claims
require diamond formation but from a specie which is not
elemental carbon” (page 7 of Answer), the appealed claims, taken
as a whole in light of the specification, would be understood by
one of ordinary skill in the art as a process for synthesizing
diamond from nascent carbon atoms at conditions of temperature
and pressure that do not convert amorphous carbon or graphite
(“elemental carbon”) to diamond.
Finally, we consider the examiner’s rejection of claims 1-4
and 14-16 under 35 U.S.C. § 103 as being unpatentable over
Shipton. In essence, it is the examiner’s position that since
the reaction steps for preparing mineral active carbons disclosed
by Shipton are substantially the same as the claimed process
steps, diamond will be formed by the Shipton process “to the
extent that it forms in the instant process” (page 6 of Answer).
According to the examiner, the combination of silicon carbide and
chlorine gas, Shipton’s reactants, meets the claim requirement of
a “matrix.”
There are two basic flaws in the examiner’s reasoning.
First, the claimed matrix, as defined in the specification, does
not include a combination of silicon carbide and chlorine gas.
While page 5 of the specification teaches that chlorine gas or
hydrogen chloride can be employed as a reactant for silicon
Appeal No. 94-3737
Application 07/796,932
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carbide, the specification teaches that the matrix material is
selected from metals, metal oxides, metal hydroxides, etc. (see
pages 5 and 6). Secondly, there is no question that Shipton
fails to disclose, suggest or even hint that the disclosed
process produces diamond, an express requirement of the appealed
claims. Shipton specifically discloses that the process produces
a carbon residue which, upon dechlorination, is a highly
adsorbent active carbon (page 1, lines 51-57). We appreciate
that it is a well-settled principle of patent jurisprudence that
when a claimed process appears to be substantially the same as a
process disclosed by the prior art, the burden is properly upon
the applicant to prove that the product of the prior art process
does not necessarily or inherently possess characteristics
attributed to the product of the claimed process. In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Here,
however, we do not have the situation where the process of the
prior art is substantially the same as the claimed process, and
Shipton is not silent with respect to a property of the product
that is claimed by appellant. Shipton describes the properties
and characteristics of the product of the disclosed process, and
they are surely not diamondaceous.
It is implicit in the examiner’s rejections that the
examiner believes that appellant’s process is inoperable for
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Application 07/796,932
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synthesizing diamond. However, it is axiomatic that the Patent
and Trademark Office must accept the objective truth of
statements in a specification in the absence of compelling
evidence or scientific reasoning to the contrary. In re
Marzocchi, 439 F.2d 220, 224, 169 USPQ 367, 370 (CCPA 1971).
Such evidence or reasoning is lacking in the Examiner’s Answer.
In conclusion, based on the foregoing, the examiner’s
decision rejecting the appealed claims is reversed.
REVERSED
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
CAMERON WEIFFENBACH ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 94-3737
Application 07/796,932
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John L. White
3412 Letz Ave.
McKinleyville, CA 95519-9101