Appeal No. 2000-1862
Application 08/834,061
6-7). The examiner has analyzed the scope of the rare earth-doped sol-gel glass monolith
products encompassed by claim 5 vis-à-vis the teachings of the applied prior art by using both of
these units (id.). We note in this respect that according to the written description in the
specification, the “dopant concentration is adjusted to provide the needed contrast between the
far UV spectral feature(s) and the background light . . . for purposes of calibration,” and the range
specified in claim 5 is “the quantity of erbium in the calibration medium” in a “particular
embodiment” (page 16, lines 11-14). We are of the opinion that, in light of the specification, the
examiner’s dual interpretation of claim 5 is a reasonable, conditional interpretation which would
avoid piecemeal appellate review as it provides an adequate basis for purposes of resolving prior
art issues without unsupported speculative assumptions, and thus, for purposes of this appeal, we
adopt the examiner’s interpretation of the “concentration” or “quantity” of the rare-earth dopant
in the sol-gel glass monolith product encompassed by appealed claim 5.4 Cf. In re Steele, 305
F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962); Ex parte Saceman, 27 USPQ2d 1472,
1474 (Bd. Pat. App. & Int. 1993).
While the rare earth-doped sol-gel glass monolith must have at least one discernable
spectral feature in the “far UV range” according to appealed claim 37, it is specified in appealed
claim 3 that the product must have “at least one distinct spectral feature in the range of from
about 220nm to about 300nm.” Indeed, according to the written description in the specification,
the range of possible spectral features can be “a wide range, preferably from about 190nm to
about 700nm and more particularly, from about 220nm to about 700nm” (page 8, lines 8-10, and
appealed claim 2). It is not clear on this record which part of the emission spectrum appellant
intends as the “far UV range” as we do not find a definition for this “range” in the written
description in the specification, although it would appear to include at least “about 257nm”
which is disclosed for erbium as the dopant (e.g., page 4, lines 27; page 8, lines 6-15; page 12,
lines 17-22; page 15, line 22, to page 16, line 7; page 16, lines 15-25; page 20, lines 1-3; page 23,
lines 4-10). Where we have found a term reflecting the claim term “far UV range” in reference
works in the technical literature, there is no consensus definition, only arbitrary definitions that
4 However, while we have so considered appealed claim 5, the matter of whether this claim as it
stands of record complies with § 112, second paragraph, should be addressed by the examiner
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