Appeal No. 1998-1665 Page 4
Application No. 08/476,831
have found it obvious to modify the process of McNeely by the encapsulation process of Bult “to have
gallium arsenide with low carbon in order to produce a stabler composition.” (Answer, page 4).
We note that Bult is silent as to the level of carbon in the semiconductor composition. The
examiner states that the combination of references as applied against the claims teach low carbon
content since the same method as applicant is used to remove the carbon, i.e. the use of a wet boron
oxide. It is the examiner’s position that the specification clearly states that the claimed carbon levels are
obtained solely by using wet boron oxide during growth. The examiner concludes that since the
process suggested by the combination of McNeely and Bult uses wet boron oxide in a GaAs single
crystal growth process, the impurity levels must inherently be the same.
“[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 assertion of
inherency is reasonable. Ex parte Levy, 17 USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990); Ex
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