Appeal No. 2001-0032
Application No. 08/735,389
The examiner states that he has not considered the
appellants’ claim requirement, which the examiner considers to be
new matter, that the SiC remains crystalline (answer, pages 3
and 6). The examiner’s refusal to consider this claim
requirement is contrary to standard examining practice. As
stated in the Manual of Patent Examining Procedure § 2163.06(I)
(8th ed. rev. 1, Feb. 2003): “If new matter is added to the
claims, the examiner should reject the claims under 35 U.S.C.
112, first paragraph - written description requirement. In re
Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). The examiner
should still consider the subject matter added to the claim in
making rejections based on prior art since the new matter
rejection may be overcome by applicant.”
Moreover, even if the appellants’ claim requirement that the
SiC remains crystalline is ignored, the examiner has not
established a prima facie case of anticipation. First, the
appellants’ claims require that boron is implanted into
crystalline SiC, whereas Baliga’s boron is implanted into
amorphous SiC (col. 3, lines 55-58). Second, for the appellants’
claimed invention to be anticipated by Baliga, the reference must
lead one of ordinary skill in the art to a composition which
falls within the scope of the claim “without any need for
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