Appeal No. 2005-0518 Page 4
Application No. 09/313,424
Not only is there no adequate finding with regard to the diffusion requirement of the
claim, the burden shift called for by the Examiner is also not adequately supported. The
Examiner indicates that the depth of ion implantation in the process of Hsu “is a function
Gaussian distribution [sic] which is dependent on implant energy, ion density, and anneal
temperature” and then attempts to shift the burden to Appellants to show that Hsu does not teach
the placing step (Answer, pp. 7-8). In a case where it is reasonable to believe that a property
relied upon for patentability is inherently present in the prior art, it is reasonable to shift the
burden to Appellants to show, in fact, that property does not reside in the prior art. In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 432-33 (CCPA 1977). Such a finding of inherency is not
reasonable here because evidence of the Gaussian distribution is present in Hsu itself. Hsu
describes the Gaussian distribution of the ions in the process as shown in Figure 2 and explains
that “[t]he nitrogen ions come to rest in an [sic] Gaussian distribution pattern within the buffed
silicon dioxide layer 59.” (Hsu, col. 7, ll. 29-33 (emphasis added)). Hsu specifically states that
the ions reside in the silicon dioxide layer 59 (col. 7, ll. 29-33). It is inappropriate under the
circumstances of this case to shift the burden to Appellants. While it is possible that a small
number of ions might come to rest outside the silicon dioxide layer 59, such as in the portion of
layer 42 closest to the silicon dioxide layer, inherency cannot be based on probabilities and
possibilities, it must be necessarily present. Akamai Technologies Inc. v. Cable & Wireless
Internet Services Inc., 344 F.3d 1186, 1192, 68 USPQ2d 1186, 1190 (Fed. Cir. 2003); In re
Oelrich, 666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981).
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