Ex parte THOMAS - Page 6




          Appeal No. 95-2896                                         Page 6           
          Application No. 07/977,771                                                  

          whether appellant has proven that the invention will work.                  


               Based on the present record, we find ourselves in                      
          agreement with appellant's basic position (brief, pages 19 and              
          20) that the original disclosure reasonably conveys to the                  
          artisan that appellant had possession of the claimed subject                
          matter including a solid-state diamond formation method that                
          included the steps of furnishing a substrate for diamond                    
          growth, forming a metal-carbon alloy on the substrate with                  
          carbon present in a metal matrix therein, and forming a                     
          diamond film on the substrate from the alloy carbon atoms                   
          while the alloy is in a solid phase (specification, page 2,                 
          lines 14-19).  Accordingly, we determine that the subject                   
          matter of the appealed claims is adequately described in the                
          original disclosure.  Therefore, the rejection under § 112,                 
          first paragraph, with regard to the alleged lack of                         
          descriptive support for the claims on appeal cannot be                      
          sustained.                                                                  
                        The Rejection for Lack of Enablement                          
               According to the examiner, the specification is non-                   
          enabling since the disclosure only suggests "... that                       








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