Appeal No. 2000-1862
Application 08/834,061
with respect to neodymium and erbium doped sol-gel silica glass monolith products, either
expressly or under the principles of inherency, in a manner sufficient to have placed a person of
ordinary skill in the art in possession of the claimed invention (answer, pages 4 and 5-7). See
generally, In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990); In re King,
801 F.2d 1324, 1326, 231 USPQ 136, 138 (Fed. Cir. 1986). Because the claimed and prior art
rare earth-doped sol-gel glass monolith products thus reasonably appear to be identical, appellant
now has the burden to prove by effective argument and/or objective evidence that the prior art
products do not inherently possess the characteristics of the claimed products. See Spada, supra;
King, 801 F.2d at 1327, 231 USPQ at 138-39; In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,
433-34 (CCPA 1977).
In view of the prima facie case of anticipation made out over Orignac, we have again
evaluated all of the evidence of anticipation and non-anticipation based on the record as a whole,
giving due consideration to the weight of appellant’s arguments in the brief and reply brief.
Spada, supra.
We have carefully considered appellant’s arguments that “[a]lthough Orignac . . . may
have investigated the spectral properties of sol-gel glass monoliths,” the reference does not
disclose that the rare earth dopants, and concentrations thereof, were selected in to provide a
special spectral feature in the “far UV range” so as to function as a calibration medium in
cooperation with the components for an optical instrument recited in the preamble of appealed
claim 37 (brief, pages 4-6; reply brief, pages 1-3). However, we are of the opinion that these
arguments do not effectively establish that the neodymium and erbium doped sol-gel silica glass
monolith products of Orignac do not necessarily or inherently have the characteristics of the
claimed rare earth-doped sol-gel silica glass monolith products for two reasons. First, as we
determined above, the preamble taken with the body of claim 37 gives meaning to the claim to
the extent that the claimed rare earth-doped sol-gel monolith product must be “capable of
assuming a position within the light path” of an optical instrument that contains the components
stated in the preamble, when used as “[a] calibration medium” for that optical instrument. And,
second, the fact that Orignac does not teach that the disclosed sol-gel silica glass monoliths can
be used as a calibration medium or select the rare earth dopants on the basis of a special spectral
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