Ex parte PROSCIA et al. - Page 4




          Appeal No. 95-3462                                                          
          Application No. 08/083,206                                                  


               We now turn to the rejections grounded upon the combined               
          teachings of Goodman or Gordon with Bohg.  Appellants do not                
          seriously take issue with the propriety of the combination of               
          references.  Instead, appellants urge that application of the               
          collective teachings of the references, i.e. substitution of                
          amine for the ammonia reactant in Goodman or Gordon as                      
          suggested by Bohg, would be expected to result in the                       
          formation of a carbon-containing metal nitride rather than a                
          “substantially carbon-free” metal nitride.  As noted by the                 
          examiner, this argument is not persuasive since the appealed                
          claims, as presently constituted, do not preclude the                       
          formation of a metal nitride which contains carbon.                         
               Moreover, we cannot agree with the comment on page 6 of                
          appellants’ brief to the effect that the limitation                         
          “substantially carbon-free” is somehow inherent in the claims.              
          We decline to read limitations into the claims which are not                
          explicitly recited therein.  See In re Prater, 415 F.2d 1393,               
          1404-1405, 162 USPQ 541, 550-551 (CCPA 1969).  The term                     
          “nitride,” as used in the claims, is apparently a generic term              
          which embraces carbonitrides as well as those that are                      
          substantially carbon-free.  Appellants have presented no                    
                                          4                                           





Page:  Previous  1  2  3  4  5  6  7  8  9  10  Next 

Last modified: November 3, 2007