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. 4Page: Previous 1 2 3 4 5 6 7 8 NextLast modified: November 3, 2007