Appeal No. 1999-0507
Application 08/407,033
a) introducing, into a gas having a temperature of at least about 600°C, a dispersion consisting
essentially of, in a decomposable carbon-containing compound, an elemental oxide selected from the
group consisting of SiO2, TiO2, WO3, B2O3, MnO2, Fe2O3, ZrO2, HfO2, MoO3, Cr2O3, VO2, V2O5,
Nb2O5 and Ta2O5;
b) decomposing said dispersion into said gas, thereby forming a composition containing
uniformly mixed elemental carbon and said elemental oxide; and
c) recovering the formed uniformly mixed composition.
The appealed claims, as represented by claim 22, are drawn to a method for preparing a
composition containing uniformly mixed elemental carbon and an elemental oxide which consists
essentially of at least the steps of introducing a dispersion consisting essentially of at least a specified
elemental oxide in a decomposable carbon-containing compound, decomposing the dispersion in a gas
having the stated temperature, and recovering the uniformly mixed composition. The product can be
heated in an inert atmosphere to form elemental carbide powder (claim 23).
The references relied on by the examiner are:
Dean et al. (Dean) 3,686,347 Aug. 22, 1972
Yoda et al. (Yoda) 4,752,456 Jun. 21, 1988
The examiner has rejected all of the appealed claims under 35 U.S.C. § 103(a) as being
unpatentable over Yoda taken with Dean.
We reverse.
Rather than reiterate the respective positions advanced by the examiner and appellants, we refer
to the examiner’s answer and to appellants’ brief and reply brief for a complete exposition thereof.
Opinion
The dispositive issue in this appeal is whether appealed claims 22 and 23 are, as framed by the
examiner, “broad enough to embrace introducing the metal oxide by forming it in-situ, which is the
process of Yoda” (answer, page 3). The examiner, however, does not explain why the claims should
be so interpreted in the answer. Appellants, on the other hand, point out that claim 22 requires
“introducing a metal oxide” which is “the direct addition of metal oxide and . . . [not] a precursor
compound” (reply brief, pages 1-2; emphasis in the original deleted).
It seems to us that when considered in light of the written description in the specification as
interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127 F.3d 1048, 1054-55, 44
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