Appeal No. 2000-1862
Application 08/834,061
feature in the “far UV range,” is unavailing because it is not necessary that a reference “teach”
the claimed invention, only that the appealed claims “‘read on’ something disclosed in the
reference, i.e., all limitations of the claims are found in the reference, or ‘fully met’ by it.”
Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983); cf.
Celeritas Technologies Ltd. V. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d
1516, 1522 (Fed. Cir. 1998) (“[T]he question whether a reference ‘teaches away’ from the
invention is inapplicable to an anticipation analysis.”).
Appellant further states that “[t]here is no mention in the Orignac reference” of the
limitation set forth in appealed claims 3, 5 and 7, and apparently in the case of claim 5, that the
“dopants must have a concentration many times that found in the materials disclosed in” the
reference, without supplying the basis for these contentions (brief, page 5). In response, the
examiner explains how each of these limitations are expressly or inherently shown in Orignac
(answer, pages 5-7), including the dual interpretation of the phrase “concentration of the rare-
earth dopant” in claim 5 which we find to be a reasonable, conditional interpretation of this claim
as explained above. In the absence of rebuttal by appellant (reply brief in entirety), we find the
examiner’s position to be reasonable on this record. In this respect, we find that among the rare
earth-doped sol-gel silica glass monoliths specifically shown in Orignac is the species containing
“3 at. %” neodymium illustrated in Orignac FIG. 3. It reasonably appears from Orignac that
“~0.36 at. %” of this rare earth element is “1 wt %” when doped on “pure silica sol-gel glasses”
(page 896). Thus, on this record, the single species of FIG. 3 appears to be doped with about 9
weight percent of neodymium, which anticipates the limitation of claim 5 as it stands on appeal.
See Titanium Metals Corp. v. Banner, 778 F.2d 775, 781-83, 227 USPQ 773, 778-79 (Fed. Cir.
1985).
Accordingly, based on our consideration of the totality of the record before us, we have
weighed the evidence of anticipation found in Orignac with appellant’s countervailing evidence
of and argument for no anticipation in fact and find that the claimed invention encompassed by
appealed claims 2 through 15 are anticipated as a matter of fact under 35 U.S.C. § 102(a).
Turning now to the ground of rejection based on Xu, we find that, as a matter of fact, the
examiner has established a prima facie case of anticipation of claims 37, 3 and 7, as we
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