Appeal No. 2005-0822
Application No. 09/825,612
Patent and Trademark Office (PTO) where a patent has not yet
issued. As we noted above, the appellants do not challenge the
examiner’s factual findings that Chang discloses a method for
making a semiconductor device comprising forming a product in a
PECVD chamber using, inter alia, argon and TiCl4 and exposing a
substrate to the product under substantially the same or similar
conditions as those disclosed in the present specification. In
fact, the appellants candidly admit that the present
specification identifies argon as an exemplary gas that performs
the functions recited in the appealed claims. (Appeal brief at
5.)
Under these circumstances, it was appropriate on the part of
the examiner (answer at 6, 11) to shift the burden of proof to
the appellants to show that the argon in Chang would not
inherently or necessarily satisfy the functional limitations
recited in appealed claims 13, 22, 24, 25, and 28. Cf. In re
Schreiber, 128 F.3d 1473, 1478, 44 USPQ2d 1429, 1432 (Fed. Cir.
1997) (“[C]hoosing to define an element functionally, i.e., by
what it does, carries with it a risk...[W]here the Patent Office
has reason to believe that a functional limitation asserted to be
critical for establishing novelty in the claimed subject matter
may, in fact, be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to prove that
the subject matter shown to be in the prior art does not possess
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