Appeal No. 2005-0453 Page 6
Application No. 09/893,866
the claimed invention, the burden shifts to the applicant to prove the reference is not enabling.
Chester v. Miller, 906 F.2d 1574, 1578, 15 USPQ2d 1333, 1337 (Fed. Cir. 1990); In re Sasse,
629 F.2d 675, 681, 207 USPQ 107, 111 (CCPA 1980). Appellant provides no convincing proof
that Zhang is not enabling.
As a second matter, the Examiner further provided a reasonable basis to conclude that
one of ordinary skill in the semiconductor device forming art would have been in possession of
the claimed invention upon a reading of Zhang (Answer, p. 6-10). Zhang specifically describes
sputtering wherein the impurity is added to the target (Zhang, col. 3, ll. 62-65). As explained by
the Examiner, and further supported by Appellant’s specification, sputtering was a conventional
process in the art (Answer, p. 6-7; specification, p. 4, l. 23 to p. 7, l. 17). In such a circumstance,
Zhang need not provide an express articulation of the details of the sputtering operation to enable
one of ordinary skill to perform the operation because it is evident that those of ordinary skill in
the art possessed the knowledge. See In re Donohue, 766 F.2d 531, 533, 226 USPQ 619, 621
(Fed. Cir. 1985).
We conclude that the Examiner established a prima facie case of anticipation with
respect to the subject matter of claims 1-3, 12, and 14 which has not been sufficiently rebutted
by Appellant.
Obviousness over Zhang
The Examiner rejected claims 4, 5, 11, 13, and 15-18 under 35 U.S.C. § 103(a) as being
unpatentable over Zhang. We select claim 4 to represent the issues on appeal for this rejection.
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