Appeal No. 1999-2683
Application 08/754,564
understand the Examiner's position that layer 24 could
function as an etch stop layer because of this small relative
etch rate difference, we find it would not necessarily serve
this function unless one of ordinary skill in the art
recognized that layer 24 should function as an etch stop layer
so that the amount of overetch could be controlled to prevent
etching through the thin layer 24. Inherency requires that a
characteristic or property necessarily be in the prior art
reference. See In re Rijckaert, 9 F.3d 1531, 1534,
28 USPQ2d 1955, 1957 (Fed. Cir. 1993) (the mere fact that a
certain thing may result from a given set of circumstances is
not sufficient to establish inherency). The initial burden of
establishing a prima facie case of inherency by evidence or
persuasive reasoning is on the examiner, after which the
burden shifts to appellant. See In re Schreiber,
128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir. 1997).
In addition, "[i]n order to render a claimed apparatus or
method obvious, the prior art must enable one skilled in the
art to make and use the apparatus or method." Motorola, Inc.
v. Interdigital Tech. Corp., 121 F.3d 1461, 1471,
43 USPQ2d 1481, 1489 (Fed. Cir. 1997). That is, the prior art
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