Appeal No. 2005-1458
Application No. 09/732,799 Page 8
1365 (Fed. Cir. 1997); In re Woodruff, 919 F.2d 1575, 1578, 16
USPQ2d 1934, 1936-37 (Fed. Cir. 1990).4
Appellants (reply brief, pages 2 and 3) seemingly argue that
Anthony adds the boron for a different purpose than appellants
and refer to Examples on pages 15 and 16 of their specification
to apparently suggest that an amount of boron less than 100 parts
per million (ppm) would not be suggested by Anthony. However, in
reaching the conclusion that the claimed subject matter is prima
facie obvious over the combined teachings of the applied
references, we also note that the prior art references in
question need not provide all of appellants* reasons, such as the
alleged high thermoconductivity and semiconducting properties, to
establish a prima facie case of obviousness. See In re Kemps, 97
F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir. 1996) (the
motivation to combine features need not be identical to that of
appellant to establish a prima facie case of obviousness).
Furthermore, to the extent appellant may have recognized
another potential advantage of the claimed diamond that would
have arisen by otherwise following the teachings of the prior
4 We need not review the teachings of Tsuji because we find
that the teachings of Anthony are sufficient to make out a prima
facie case of obviousness.
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