Ex Parte Kizilyalli et al - Page 4


          Appeal No. 2004-2049                                                        
          Application No. 10/158,467                                                  

               between the later deposited high-k dielectric layer 4                  
               and the underlying silicon substrate 2 and provides a                  
               good interface with the silicon to reduce undesired                    
               surface states in the silicon.                                         

               Yoon discloses what appears to be the same oxide layer as              
          claimed by appellants, made by a process similar to the process             
          disclosed in appellants’ specification.  See Figures 1-6 and                
          columns 3-6 of Yoon.  Because there is reasonable basis to                  
          “believe” that the oxide layer of Yoon is identical or                      
          substantially identical to appellants’ claimed oxide layer, the             
          burden shifts to appellants to show that in fact the oxide layer            
          of Yoon cannot reduce strain.  We reiterate that the Patent                 
          Office can require appellants to prove that a function or                   
          property relied upon for novelty is not possessed by the prior              
          art otherwise meeting the limitations of the claims.  In re                 
          Best, 652 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).                
          Absent such evidence, as in the present case, we affirm the                 
          anticipation rejection.                                                     

          II. The 35 U.S.C. § 103 rejection of claims 4 and 15 as being               
               obvious over Yoon in view of Shindo                                    
               We consider claim 41 in this rejection.                                
               We refer to pages 4-5 of the answer.  We refer to pages 8-9            
          of the brief regarding appellants’ response to the examiner’s               
          rejection.                                                                  
               Appellants argue that the combination of Yoon and Shindo is            
          improper because there is no teaching in either Yoon or Shindo              


                                                                                      
          1 Although the copy of claim 4 as set forth in appellants’ appendix indicates
          that claim 4 depends upon claim 1, because there is no antecedent basis for 
          “the perovskite material” recited in claim 4, we treat claim 4 in this appeal
          as being dependent upon claim 3.                                            

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