Appeal No. 2005-1458
Application No. 09/732,799 Page 9
art, that recognition does not necessarily form a basis for
patentability. See In re Woodruff, 919 F.2d at 1577-1578, 16
USPQ2d at 1936 (Fed. Cir. 1990). In any event, in the present
case, Anthony expressly suggests that the isotopically pure
diamond would have higher thermal conductivity than a diamond not
possessing that isotopic purity. See, e.g., column 3, lines 20-
23 of Anthony. Moreover, appellants acknowledge that it is known
that impurity addition to diamond decreases thermal conductivity.
Thus employing less than 100 ppm total impurities and additives,
such as 5 ppm boron additive, as reasonably suggested in the
paragraph bridging columns 6 and 7 of Anthony would have been
expected to yield higher thermal conductivities than employing
the upper limit of 4,000 ppm boron. As expressed in footnote 3
above, the p-type semiconducting properties are also expected.
To the extent appellants (brief, page 7) are asserting that
the examples presented in the specification establish unexpected
results for the claimed synthetic diamond, we note that
appellants bear the burden of establishing that the claimed
subject matter in fact imparts unexpected properties. See In re
Klosak, 455 F.2d 1077, 1080, 173 USPQ 14, 16 (CCPA 1972). In our
opinion, appellants have not met the burden of establishing that
the reported test results set forth in the specification for the
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