Appeal No. 2000-1862
Application 08/834,061
interpreted these claims above, under § 102(b) by pointing out where each and every element of
the claimed invention, arranged as required by the claim, is described identically in the reference
with respect to erbium doped sol-gel silica glass monolith products,8 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 4-5 and 5-7). See generally, Spada,
supra; King, 801 F.2d at 1326, 231 USPQ at 138. Because the claimed and prior art erbium-
doped sol-gel glass monolith products thus reasonably appear to be identical, the burden has
shifted to appellant 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; Best, supra.
In view of the prima facie case of anticipation made out over Xu, 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.
The arguments advanced by appellant with respect to the sol-gel silica glass monoliths of
the appealed claims and Xu (brief, pages 6-7; reply brief, page 3) are essentially the same
arguments advanced with respect to the sol-gel silica glass monoliths of the appealed claims and
Orignac, which we considered above. We further note that appellant (reply brief in entirety) has
also not responded to the position the examiner advanced in the answer with respect to
appellant’s arguments concerning Xu (answer, pages 5-6 and 7). Upon carefully considering the
record with respect to the examiner’s reliance on Xu, we adopt the position we expressed above
with respect to the common issues. Specifically, we note that none of the appealed claims
involved in this ground of rejection specify the concentration of the rare earth dopant, and the
sol-gel silica glass monoliths of Xu are “doped with 1.2 mol% Er(NO3)3” (e.g., “3. Results,” page
236). Appellant merely alleges that the claimed “rare earth dopants must have a concentration
many times that found in the materials disclosed in Xu” (brief, page 7), but has not supported this
position, which the examiner finds to be incorrect (answer, page 7). We observe that while Xu
8 We observe that Xu discloses sol-gel silica glass monoliths and thus suggest that the issue of
whether this reference anticipates appealed claim 8 be considered upon any further prosecution of
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