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