Appeal No. 2006-0783
Application No. 10/396,164
conveyed to one of ordinary skill in the art that Pu was in possession of a process that
includes exposing selected regions of a doped silicon dioxide layer or structure to an
etchant comprising C2HxFy, as required by claim 9.
Appellants argue that Pu does not expressly or inherently describe, or teach or
suggest, exposing a layer or structure comprising doped silicon dioxide to an etchant that
will etch material of the layer or structure at a faster rate than it etches a material of
another layer or structure comprising undoped silicon dioxide. (Brief, p. 7).
Because the C2H4F2 etchant corresponds to the formula given for the etchants that
are disclosed and argued by the Appellants as providing the selectivity characteristic
defined by the appealed independent claims, it is appropriate to consider this etchant
suggested by Pu to necessarily and inherently possess the aforementioned selectivity
characteristic. See In re Skoner 517 F.2d 947, 950, 186 USPQ 80, 82-83 (CCPA 1975)
and Ex parte Obiaya, 227 USPQ 58, 60 (BPAI 1985).
Therefore, it is appropriate to require the Appellants to prove that this etchant
would not necessarily and inherently possess the argued characteristic. Whether the
rejection is based on “inherency” under 35 U.S.C. § 102, on “prima facie obviousness”
under 35 U.S.C. § 103, jointly or alternatively, the burden of proof is the same, and its
fairness is evidenced by the inability of the Patent and Trademark Office to manufacture
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