Appeal No. 96-1118
Application 07/995,229
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of appealed claims 1 through 11 under 35 U.S.C. § 112, second
paragraph (answer, pages 2-3). We have reviewed the language “sharp surfaces” appearing in the last
line of claim 1 (emphasis supplied) in light of claim 1 as a whole, as well as in view of the specification,
as to whether this claim in fact sets out and circumscribes a particular area with a reasonable degree of
precision and particularity as required by the statute. In re Moore, 439 F.2d 1232, 1235, 169 USPQ
236, 238 (CCPA 1971). We find that it is disclosed in the specification that “CBN [cubic boron
nitride] particles formed directly upon conversion have a distinct profile from those CBN crystals
obtained by milling” as such “particles are not as rounded and provide the sharp surfaces needed in
abrading or cutting tools” (page 9, lines 31-34). Accordingly, we reverse the ground of rejection under
§ 112, second paragraph, because we conclude that one skilled in this art would reasonably understand
from the specification that what is claimed is “multicrystalline cubic boron nitride particles” that
“comprise sharp surfaces” required for abrading or cutting.
We have further carefully considered the record and find that we also can not sustain either of
the grounds of rejection under 35 U.S.C. § 103 based on Adaurov et al. taken with Wentorf, Jr. et al.
(answer, pages 3-4). It is well settled that the examiner must satisfy his burden of establishing a prima4
facie case of obviousness by showing some objective teaching or suggestion in the applied prior art
taken as a whole or that knowledge generally available to one of ordinary skill in the art would have led
that person to the claimed invention, including each and every limitation of the claims, without recourse
to the teachings in appellants' disclosure. See generally, In re Oetiker, 977 F.2d 1443, 1447-48, 24
USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Fine, 837 F.2d 1071, 1074-
76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chemical Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531-32 (Fed. Cir. 1988).
We agree with appellants (brief, e.g., pages 5-6) that the examiner has failed to establish on the
4The references relied on by the examiner with respect to the grounds of rejection are listed at page 2
of the answer. We refer to these references in our opinion by the name associated therewith by the
examiner.
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