Appeal 2007-0088
Application 10/191,297
According to the Examiner, it would have been obvious for one with
ordinary skill in this art to use erbium as Mangold's dopant in view of the
teaching in Berkey that erbium is a known dopant (Answer 4). The
Examiner believes her obviousness conclusion is reinforced by the
undisputed fact that erbium is one of the transition metals which Mangold
prefers to use as dopants and by the undisputed fact that erbium, like
Mangold's cerium, is a member of the Lanthanide series (id.).
The Appellants argue that the applied prior art contains no teaching or
suggestion that erbium may be interchanged with other Lanthanide members
such as cerium (Br. 4). The Appellants further argue that the applied prior
art contains no teaching or suggestion of any benefit or advantage of using
erbium as Mangold's dopant (Br. 5).
OPINION
For the reasons set forth in the Answer and below, we will sustain this
rejection.
Contrary to the Appellants’ belief, a teaching, suggestion, or
motivation to combine the relevant prior art teachings does not have to be
found explicitly in the prior art, as the teaching, suggestion, or motivation
may be implicit from the prior art as a whole. In re Kahn, 441 F.3d 977,
988, 78 USPQ2d 1329, 1336; cited with approval in KSR Int'l. Co. v.
Teleflex Inc., 127 S. Ct. 1727, 82 USPQ2d 1385 (2007).
In light of the foregoing, we determine that a prima facie case of
obviousness is well supported by the reference evidence before us. Erbium
is a known dopant as evinced by Berkey and is a member of the broad as
well as the preferred dopant classes disclosed by Mangold. Moreover, like
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