Appeal No. 2005-0453 Page 5
Application No. 09/893,866
The Examiner has provided sufficient reason to conclude that all the limitations of the
claimed process are present in the process of Zhang including the concentration limitations
(Answer, pp. 6-10). While not expressly articulated in the reference, the concentration
requirements of claims 1 and 12 are inherently met by the process of Zhang (Answer, pp. 7-8 and
9-10). Zhang describes forming the film by sputtering wherein the catalyst is added to the
sputtering target. Adding the catalyst to the target necessarily would result in a first
concentration of impurity in the target as required by claim 1. Performing sputtering using the
described target necessarily would result in a second concentration of impurity in the resultant
sputtered film as further required by claim 1. Moreover, the sputtering process inherently
controls the amount of the impurity on the substrate as required by claim 12 due to the inherent
rates of sputtering exhibited by silicon and the impurity.
Zhang need not expressly articulate the concentration requirements to establish a prima
facie case of anticipation, it is enough that there is a reasonable basis to conclude that the
claimed limitations are inherently met. In re Best, 562 F.2d 1252, 1254-55, 195 USPQ 430, 432-
34 (CCPA 1977). In such circumstances, it is reasonable to shift the burden to the Appellant to
prove that, in fact, the prior art sputtering process does not necessarily or inherently meet the
concentration requirements of the claims. Best, 562 F.2d at 1254, 195 USPQ at 433. Appellant
has not provided the required level of proof to overcome the reasonable conclusion of inherency.
With regard to the enablement of a reference, a reference is presumed to be enabling and
therefore, once the examiner establishes that the reference teaches each and every limitation of
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