Appeal No. 1997-3696 Page 7
Application No. 08/473,419
prima facie case of unpatentability rests upon the examiner. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984). It is therefore incumbent on the examiner to provide a factual basis for the assertion
of inherency which establishes its reasonableness. In the present case, the examiner has not discharged
that burden.
Claim 66 is directed to a crystalline material having a resistivity in the range of from about 0.7 to
about 10 ohm-cm and an electron mobility greater than 3000 cm /volt-second. The examiner states2
that Miyazaki “teaches the claimed semiconductor.” (Answer, page 3). The examiner further states that
the reference teaches forming a crystalline material by the method shown in the specification including
using a carbon liner (Answer, page 5). However, as pointed out by appellant at pages 3-4 of the Reply
Brief, the process described by Miyazaki is not the same as that described in the specification. For
instance, Miyazaki describes a three temperature horizontal Bridgeman method using a carbon covered
quartz crucible for growing the crystals (English abstract; translation, page 2). The specification
describes a vertical growth method using a graphite crucible covered with a carbon cloth. The
specification indicates that the process overcomes limitations in the Bridgeman process and results in a
more uniform and controllable resistivity. The examiner has not provided any convincing technical
reasoning or objective evidence tending to show that the differences in the processes would not result in
differences in the material. We note that the specification itself seems to indicate that differences in the
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007