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