Appeal No. 1997-3696 Page 6
Application No. 08/473,419
In our view, the reason, suggestion or motivation for making the combination, as expressed in
the examiner's stated rejection, is not adequately grounded in the prior art. Accordingly, we reverse the
examiner’s rejection of claims 61-64.
Anticipation of Claims 66-68 by Miyazaki
The rejection of claims 66-68 rests on a theory that the Group II-VI single crystal
semiconductors made by the process described by Miyazaki inherently possess the resistivity and
electron mobility properties recited in the claims. “[I]t is elementary that the mere recitation of a newly
discovered function or property, inherently possessed by things in the prior art, does not cause a claim
drawn to those things to distinguish over the prior art.” In re Best, 562 F.2d 1252, 1254, 195 USPQ
430, 433 (CCPA 1977)(quoting In re Swinehart, 439 F.2d 210, 169 USPQ 226 (1971)).
Therefore, where the examiner has reason to believe that a property asserted to be critical for
establishing novelty in the claimed subject matter may, in fact, be an inherent characteristic of the prior
art product, the examiner possesses the authority to require an applicant to prove that the subject
matter shown to be in the prior art does not in fact possess the property. Id. However, before an
applicant can be put to this burdensome task, the examiner must provide enough evidence or scientific
reasoning to establish that the examiner’s belief that the property is inherent is a reasonable belief. Ex
parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990); Ex parte Skinner, 2 USPQ2d
1788, 1789 (Bd. Pat. App. & Int. 1986). It must be remembered that the burden of establishing a
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