Sandhu, as the moving party, bears the burden of proof. 37 CFR § 1.637(a). In order to meet
this burden Sandhu must prove that one having ordinary skill in the art would not be able to practice
the invention of Leung’s Claims 13, 19, 20 and 26 without undue experimentation. In other words,
Sandhu must show that those skilled in the art, given Leung’s claims and written description, would
not be able to practice the invention without undue experimentation.
C.
Sandhu relies upon the affidavit of Irina Vasilyeva (SX 1015). With respect to the
unpredictability of the CVD process Vasilyeva testifies:
10. During the period from November 14, 1994, to the present, the field of
semiconductor processing science, especially as it relates to the practice of
chemical reactions used in semiconductor manufacturing processes to obtain
specific results such as controlling the elemental composition of deposited films,
or controlling the resistivity of such films, has been a highly unpredictable
science, and is understood as such by those of ordinary skill in the art. Indeed,
this is underscored by the following statement made by Leung in the <143
application at page 8, lines 6-8 (Exhibit 1002), that they did not understand how
their invention worked: “[a]lthough the exact mechanism of the present
invention is not known, we believe the high energy ion bombardment of the
films on a biased substrate densifies the films.”
SX 1015, p. 7, ¶ 10.
We do not credit Vasilyeva’s opinion on predictability. The only stated basis supporting
Vasilyeva’s opinion is the fact that 143 Specification says that the Leung inventors stated that they did
not fully understand the mechanism by which the invention worked. We fail to see the connection
between the inventors understanding of the mechanism which underlies the process and
unpredictability. In any event, enablement does not require that inventor to understand how or why
the invention works. Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1570, 219 USPQ 1137,
1140 (Fed. Cir. 1983). Vasilyeva thus has not provided an adequate basis for her opinion that the art
is unpredictable. We are not required to credit the unsupported assertions of an expert witness. Rohm
and Haas Co. v. Brotech Corp., 127 F.3d 1089, 1092, 44 USPQ2d 1459, 1462 (Fed. Cir. 1997).
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