Appeal No. 96-0176
Application 08/012,556
particular characteristic used by appellant to describe the claimed invention will not patentably
distinguish the claimed invention over an embodiment disclosed in that reference which may inherently
satisfy the requirements of the appealed claims. Best, 562 F.2d at 1254, 195 USPQ at 433; In re
Skoner, 517 F.2d 947, 950, 186 USPQ 80, 82 (CCPA 1975). It is also well settled that a prima
facie case of anticipation is established where the examiner has reasonably concluded from the
evidence of record that the embodiment disclosed in that reference may inherently satisfy the
requirements of the appealed claims even though the examiner cannot conclusively show or
demonstrate the inherent characteristic(s) with such evidence. Best, supra; compare Skoner, 517
F.2d 947, 950-51, 186 USPQ 80, 82-83. We have also considered appellant=s contention that the
combination of steps and/or substrates and/or semiconductors specified in claims 3, 7, 29, 30 and 31
are not taught by Kong (principal brief, page 7). However, we are not persuaded by the contention
that the teachings of Kong do not anticipate these claims because Kong teaches that both 6H-SiC and
SiC film is deposited on the prepared 6H-SiC substrate (e.g., page 2673, left column, and page 2674).
Accordingly, in the absence of effective argument and/or evidence patentably distinguishing the
claimed invention of claims 1, 3, 7, 9 and 28 through 31 from the teachings of Kong under ' 102(b),
we affirm this ground of rejection.
We have further compared claims 1 and 28 as we have construed these claims above with the
disclosure of Hiramatsu in view of the admission of prior art at page 17, line 23, to page 18, line 13, of
the specification, and find that we cannot agree with the examiner that the claimed method
encompassed by these claims would have been obvious over the applied prior art to one of ordinary
skill in this art at the time the claimed invention was made. We find that appellant has admitted only
that heteroepitaxial growth on the surface of certain forms of sapphire was improved by heating to
A1200EC for 30 min,@ citing Smith et al., and by Aa high temperature 1050EC heat treatment,@ citing
Nakamura. We find that these admissions do not provide a factual basis on which to reasonably
conclude that (1) one of ordinary skill in this art would have been reasonably motivated to heat treat the
off-axis sapphire substrate of Hiramatsu prior to depositing the AlN ceramic buffer layer by the heat
treatments specifically set forth in appellant=s specification at page 17, line 23, to page 18, line 13; and
(2) the heat treatments specifically set forth in appellant=s specification at page 17, line 23, to page 18,
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