Appeal No. 97-1703
Application 08/382,432
contoured primary and tertiary mirrors, it does not teach or
suggest that these mirrors be formed on a unitary substrate. The
examiner’s conclusion that it would have been obvious to one of
ordinary skill in the art to combine these two references so as
to arrive at the subject matter recited in claims 9 and 11 (see
pages 3 and 4 in the answer) is not well taken. Douglass’
disclosure of a general method for machining nonaxisymmetric
surfaces on a workpiece or substrate has little, if any,
meaningful relevance to the formation of the primary and tertiary
mirrors in Korsch’s three-mirror optical system. In this light,
it is evident that the only suggestion for combining these two
references so as to arrive at the methods recited in independent
claims 9 and 11, and in claims 10 and 12 which depend therefrom,
stems from hindsight knowledge derived from the appellants’
disclosure. The use of such hindsight knowledge to support a
conclusion of obviousness is, of course, impermissible.
Accordingly, we shall not sustain the standing 35 U.S.C.
§ 103 rejection of claims 9 through 12 as being unpatentable over
Douglass in view of Korsch.
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