Appeal 2007-0088
Application 10/191,297
the cerium dopant of Mangold, the dopant erbium is a member of the
Lanthanide series. Under these circumstances, the artisan would have had a
reasonable expectation that erbium would be a successful dopant in
Mangold's pyrogenically produced oxide and method for the production
thereof.
In addition, the Appellants are incorrect in arguing that the applied
prior art contains no teaching or suggestion of a benefit associated with
using erbium as Mangold's dopant. The benefit would be a doped
pyrogenically prepared oxide as desired by Mangold. In this regard, we
emphasize that a prima facie case of obviousness does not require the prior
art to teach or suggest that one member of Mangold's preferred dopant class
such as the here claimed erbium is more beneficial than another member
such as patentee’s expressly disclosed cerium. See Merck & Co. v. Biocraft
Labs., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989).
As for dependent claims 2 and 3, we agree with the Examiner that the
pyrogenically produced oxide of Mangold as modified above is
indistinguishable from the oxides defined by these claims. That is, the
claimed products appear to be identical or substantially identical to the
modified-Mangold products, and these respective products are produced by
identical or substantially identical processes. Therefore, it is appropriate to
require Appellants to prove that the modified-Mangold products do not
necessarily or inherently possess the characteristics of the products defined
by claims 2 and 3. The fairness of such a requirement is evidenced by the
inability of the Patent and Trademark Office to manufacture products or to
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