Appeal No. 2003-0454 Page 11
Application No. 09/644,734
In our view, the examiner has not established that the above-noted limitation is
met by Miyashita. In that regard, the examiner has not established that the ceramic
dresser (i.e., the second conditioning surface) of Miyashita is actually made of a
material that may be polished off more easily than the material to be polished off the
substrate.7 That is the examiner has not set forth any basis as to why Miyashita's
ceramic dresser made by sintering alumina, silicon nitride, silicon carbide or the like
may be polished off more easily than the material to be polished off the substrates
disclosed by Miyashita (e.g., a polysilicon film, a SiO2 film). Absent such an analysis,
the examiner has not met the burden of presenting a prima facie case of anticipation.8
Moreover, while Miyashita's ceramic dresser made by sintering alumina, silicon nitride,
silicon carbide or the like may be polished off more easily than the material to be
7 It is well-settled that under principles of inherency, when a reference is silent about an asserted
inherent characteristic, it must be clear that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so recognized by persons of ordinary skill.
Continental Can Co. v. Monsanto Co., 948 F.2d 1264, 1268, 20 USPQ2d 1746, 1749 (Fed. Cir. 1991). As
the court stated in In re Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981)(quoting Hansgirg v.
Kemmer, 102 F.2d 212, 214, 40 USPQ 665, 667 (CCPA 1939)):
Inherency, however, may not be established by probabilities or possibilities. The mere
fact that a certain thing may result from a given set of circumstances is not sufficient.
[Citations omitted.] If, however, the disclosure is sufficient to show that the natural result
flowing from the operation as taught would result in the performance of the questioned
function, it seems to be well settled that the disclosure should be regarded as sufficient.
8 It is well settled that the burden of establishing a prima facie case of anticipation resides with the
Patent and Trademark Office (PTO). See In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed.
Cir. 1984). When relying upon the theory of inherency, the examiner must provide a basis in fact and/or
technical reasoning to reasonably support the determination that the allegedly inherent characteristic
necessarily flows from the teachings of the applied prior art. See Ex parte Levy, 17 USPQ2d 1461, 1464
(Bd. Patent App. & Int. 1990).
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