Appeal No. 94-3737
Application 07/796,932
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).
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