Ex Parte Page

Board of Patent Appeals and Interferences

Aug 31, 2006

10364286 (B.P.A.I. Aug. 31, 2006)

The opinion in support of the decision being entered today was not written
for publication in a law journal and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE

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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte ROBERT E. PAGE, JR.
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Appeal 2006-2601
Application 10/364,286
Technology Center 1700
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Decided: August 31, 2006
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Before KIMLIN, GARRIS, and FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1-41. Claims 1
and 5 are illustrative:
1. A synthetic gem comprising elements recovered from human remains.

5. A method of making a synthetic gem comprising elements recovered
from human remains comprising the steps of: a) cremating human remains
to produce carbon; b) filtering the carbon; c) purifying the carbon;
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Application 10/364,286

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d) graphitizing the carbon; and e) creating gems using crystal growth
sublimation.
In addition to the admitted prior art found in Appellant's Specification,
the Examiner relies upon the following references as evidence of
obviousness:
Rieve US 3,454,363 July 8, 1969
Sumiya US 5,908,503 Jun. 1, 1999
Phyllis Gillespie, If You Carat All: Pair Offer to Make Diamonds From
Loved One's Ashes, The Arizona Republic, Aug. 29, 1988 at B1.

Appellant's claimed invention is directed to a synthetic gem made of
elements recovered from human remains by cremation.
Appealed claims 1-4 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Sumiya. Claims 5-41 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Gillespie in view of the admitted prior art.
We have thoroughly reviewed each of Appellant's arguments for
patentability. However, we find that the Examiner's rejections are well-
founded and in accordance with current patent jurisprudence. Accordingly,
we will sustain the Examiner's rejections for the reasons set forth in the
Answer, which we incorporate herein, and we add the following for
emphasis only.
Appellant submits at page 3 of the principal Brief that the following
groups of claims stand or fall together: (I) claims 1 and 2, (II) claims 3 and
4, and (III) claims 5-41.
Appeal 2006-2601
Application 10/364,286

3
We consider first the Examiner's § 102 rejection of claims 1-4 over
Sumiya. We concur with the Examiner that the claimed synthetic gem that
comprises elements recovered from human remains is described within the
meaning of § 102 by Sumiya. Both the claimed synthetic gem and the
synthetic diamond of Sumiya comprise elemental carbon and, as explained
by the Examiner, there is no distinction whatsoever in elemental carbon
recovered from human remains or derived from any other source. Simply
put, carbon is carbon. While Appellant maintains that the principles for
examining product-by-process claims do not apply to appealed claims 1-4
because they are not product-by-process claims, we do not agree. The claim
recitation "recovered from human remains" is a process step which defines
how the elements of the synthetic gem are derived. In any event, even if
claims 1-4 on appeal are not classical product-by-process claims, it is well
settled that when a claimed product reasonably appears to be substantially
the same as a product disclosed by the prior art, the burden is on the
Applicant to prove that the prior art product does not necessarily or
inherently possess characteristics attributed to the claimed product. In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990); In re
Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977); In re
Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980). In the
present case, it is incumbent upon Appellant to establish that there is, in fact,
some difference in composition or structure between gems within the scope
of claims 1-4 and gems reasonably described by Sumiya. However, as
Appeal 2006-2601
Application 10/364,286

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pointed out by the Examiner, Appellant has failed to point to any such
difference, let alone establish such by way of evidence. Accordingly,
Appellant has not rebutted the Examiner's prima facie case of anticipation of
claims 1-4 by Sumiya.
Turning to the Examiner's § 103 rejection of claims 5-41 over Gillespie
in view of the admitted prior art, Gillespie evidences that the concept of
making synthetic gems from human remains was known in the art at the time
of filing the present application. The admitted prior art establishes that the
claimed process of cremation, including filtering, collecting, and purifying
the remains, was known in the art. Also, it was admittedly known how to
graphitize carbon and create gems using crystal growth sublimation.
Accordingly, we agree with the Examiner that it would have been obvious
for one of ordinary skill in the art to use any source of carbon, such as the
cremated human remains discussed by Gillespie, in the known process of
forming synthetic gems from carbon. We do not subscribe to Appellant's
argument that Gillespie is non-enabling for the process of synthetically
making gems from human remains. We are convinced that one of ordinary
skill in the art of making synthetic gems from elemental carbon would have
been enabled in the preparation of synthetic gems from the human remains
discussed by Gillespie. Once it was known in the art to make synthetic gems
from elemental carbon, one of ordinary skill in the art would be able to
derive and recover carbon from any organic matter and make synthetic gems
therefrom.
Appeal 2006-2601
Application 10/364,286

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As a final point, we note that Appellant bases no argument upon
objective evidence of nonobviousness, such as unexpected results, which
would serve to rebut the prima facie case of obviousness established by the
Examiner.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 CFR § 1.136(a)(1)(iv) (effective Sep.
13, 2004; 69 Fed. Reg. 49960 (Aug. 12, 2004); 1286 Off. Gaz. Pat. Office
21 (Sep. 7, 2004)).

AFFIRMED

clj

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