Appeal No. 94-3737
Application 07/796,932
carbide, the specification teaches that the matrix material is
selected from metals, metal oxides, metal hydroxides, etc. (see
pages 5 and 6). Secondly, there is no question that Shipton
fails to disclose, suggest or even hint that the disclosed
process produces diamond, an express requirement of the appealed
claims. Shipton specifically discloses that the process produces
a carbon residue which, upon dechlorination, is a highly
adsorbent active carbon (page 1, lines 51-57). We appreciate
that it is a well-settled principle of patent jurisprudence that
when a claimed process appears to be substantially the same as a
process disclosed by the prior art, the burden is properly upon
the applicant to prove that the product of the prior art process
does not necessarily or inherently possess characteristics
attributed to the product of the claimed process. In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Here,
however, we do not have the situation where the process of the
prior art is substantially the same as the claimed process, and
Shipton is not silent with respect to a property of the product
that is claimed by appellant. Shipton describes the properties
and characteristics of the product of the disclosed process, and
they are surely not diamondaceous.
It is implicit in the examiner’s rejections that the
examiner believes that appellant’s process is inoperable for
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