Appeal No. 2005-1458
Application No. 09/732,799 Page 10
claimed product would have been truly unexpected to a person of
ordinary skill in the art given the teachings of Anthony as
outlined above.
It is noted that appealed claim 17 is not limited to the
specific method of preparing a diamond and to the specific
amounts of isotopic purity (99.95% carbon-12) and minimum amount
of boron doping 3-4 ppm, as tested. Indeed, no test results for
isotopically pure carbon-13, which is within the scope of claim
17, were furnished. Moreover the minimum amount of boron doping
within the range claimed (1 ppm) has not been tested in
appellants’ specification at pages 12-21 and as reported in
Tables 2-5. Nor have appellants explained in their briefs how
the comparative examples 1-4 (page 15 of the specification) and
the results set forth in table 5 (page 15 of the specification)
are representative of the closest applied prior art.
Appellants simply have not met the burden of explaining how
the results reported in the specification can be extrapolated
from the limited instances presented so as to be guaranteed as
attainable through practicing the invention as broadly claimed.
It is well established that the evidence relied on to establish
unobviousness must be commensurate in scope with the claimed
subject matter. See In re Kerkhoven, 626 F.2d 846, 851, 205 USPQ
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