Appeal No. 96-0176
Application 08/012,556
off-axis sapphire surface is Aannealed to form the desired surface structure, this being at, for example,
1300EC for 24 hours@ (specification, page 19), while original claim 13, which is ultimately dependent
on claim 1, provides that the Astep of redistributing atoms on said surface is by heating said substrate to
at least 1200EC for at least 1 hour.@ Thus, we find that one of ordinary skill in this art would have
concluded from appellant=s specification as filed that the step of Aredistributing atoms@ to obtain
Asurface steps@ having the specified number of Alattice spacings@ and Adirection@ can be
accomplished by heating the surface to at least 1200EC for at least one 1 hour.
We have compared claims 1 and 28, as we have construed these claims above, with the
disclosure of Kong and find that the examiner has reasonably concluded that, prima facie, the process
wherein an off-axis, cut and polished 6H-SiC ceramic substrate is heated at A1473EK [that is,
1200EC,] in a flowing dry oxygen atmosphere for 1.5 [hours] to oxidize approximately 50 nm of the
polished surface in order to remove the subsurface damage caused by the mechanical polishing@
disclosed in Kong (page 2673), is an anticipation under ' 102(b) of the methods encompassed by
these claims wherein an off-axis, cut and polished, substantially flat ceramic substrate surface is heated
to at least 1200EC for at least 1 hour. In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 432-33
(CCPA 1977). Accordingly, the burden has shifted to appellant to provide effective argument and/or
evidence that the process of Kong does not in fact inherently redistribute atoms on the surface under
the conditions disclosed therein. See, e.g., Best, 562 F.2d at 1254, 195 USPQ at 433.
Appellant submits that AKong provides no indication@ that the process step disclosed therein,
that is, oxidation at 1200EC for 1.5 hours, would Aperform the claimed steps@ to obtain the specified
Asurface steps@ and that such a result has not been shown by the examiner (principal brief, page 5).
We cannot agree with appellant that the facts that (1) Kong does not discuss the surface characteristics
resulting from the oxidizing heat treatment and (2) the examiner does not show or demonstrate the
effect of the treatment step in the reference on surface characteristics, are fatal to the examiner=s
position. It is well settled that mere argument that a prior art reference is silent with respect to a
first paragraph, written description and enablement requirements, upon any further prosecution of the
claims of this application before the examiner.
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