Ex parte FUJIMORI et al. - Page 6




                 Appeal No. 1996-3121                                                                                                                   
                 Application No. 08/115,783                                                                                                             


                 the claimed invention without undue experimentation when using                                                                         
                 metallic substrates having thermal conductivities at least as                                                                          
                 high as copper-tungsten alloy.  Compare the specification at                                                                           
                 page 6, lines 10-17.  Moreover, the mere possibility that a                                                                            
                 claim covers an inoperable species does not render it unduly                                                                           
                 broad.  In re Kamal, 398 F.2d 867, 872, 158 USPQ 320, 324                                                                              
                 (CCPA 1968).  The examiner’s rejection of claims 14 and 15 is                                                                          
                 reversed.                                                                                                                              
                                                     THE REJECTIONS FOR OBVIOUSNESS                                                                     
                          As evidence of obviousness of the claimed invention, the                                                                      
                 examiner principally relies upon Yamazaki.  In a similar                                                                               
                 manner as described by appellants, Yamazaki discloses that                                                                             
                 diamond coatings may be formed on substrates by a microwave                                                                            
                 enhanced CVD process in which a carbon compound containing                                                                             
                 reactant gas including, inter alia, methanol  diluted with                     4                                                       
                 hydrogen gas is decomposed in a reaction chamber to produce a                                                                          
                 diamond film on an underlying substrate such as the “super                                                                             
                 hard metal”, tungsten carbide .  In addition to the carbon5                                                                                  


                          4See column 3, lines 40-43.                                                                                                   
                          5See column 2, lines 1 and 2 of Yamazaki.                                                                                     
                                                                           6                                                                            





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