Appeal No. 2001-2082
Application No. 08/943,146
oxide surface layer 113, gold-silicon eutectic portion 116e bonds
the gold layer to the silicon substrate over the entire bonding
area without voids in the bonding interface that may reduce the
uniformity and strength of the bond (specification, page 23).
A rejection for anticipation under section 102 requires that
the four corners of a single prior art document describe every
element of the claimed invention, either expressly or inherently,
such that a person of ordinary skill in the art could practice
the invention without undue experimentation. See Atlas Powder
Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947
(Fed. Cir. 1999); In re Paulsen, 30 F.3d 1475, 1478-79, 31 USPQ2d
1671, 1673 (Fed. Cir. 1994).
Furthermore, to establish that the titanium layer and the
eutectic portion of Mikkor must inherently function the same way
as the metal in Appellants’ claim 1, the evidence relied on by
the Examiner “must make clear that the missing descriptive matter
is necessarily present in the thing described in the reference,
and that it would be so recognized by persons of ordinary skill.”
In re Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-1951
(Fed. Cir. 1999) citing Continental Can Co. V. Monsanto Co., 948
F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991).
“Inherency, however, may not be established by probabilities or
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