Appeal No. 1998-1665 Page 5
Application No. 08/476,831
parte Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986). It must be remembered that the
examiner bears the initial burden of presenting a prima facie case of unpatentability. In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). In some cases, the examiner’s belief that a particular property was inherent has
been found to be reasonable when it was established that the claimed and prior art products were
identical or substantially identical, or produced by identical or substantially identical processes. See In
re Best, 562 F.2d at 1255, 195 USPQ at 433-34. The examiner relies on the similarity of the
processes as the basis of his belief that the carbon content is inherently within the claimed range.
We are not persuaded that the similarities in the process rise to the level of creating a
reasonable belief that the carbon impurity content of the composition one of ordinary skill in the art
would have created using the teachings of the prior art would have necessarily been at the low level
required by the claims. As pointed out by appellant (Reply Brief, page 3), the specification indicates
that the wet boron oxide assists in removal of impurities, particularly carbon, from the melt
(specification, page 8). However, there is no indication that wet boron oxide is the only factor
determining carbon impurity level. We note that the GaAs of McNeely and Bult are of semiconductor
device grade. There is no evidence presented by the examiner as to the conventional levels of carbon
impurities in GaAs of this grade. We further note that there are differences in the processes which
could reasonably affect the carbon level and the examiner has not offered any evidence or technical
reasoning tending to show that those differences do not have an effect.
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