Ex parte STEWART - Page 11




          Appeal No. 1997-0030                                                        
          Application No. 08/180,767                                                  


          inadequate for its intended purpose, or that Piper’s system                 
          would benefit from having an output coupling of the type                    
          disclosed in Kung provided at this location.  Further, the way              
          in which Kung’s output coupling device (e.g., selectively                   
          reflective mirror M  or piezo-electrically controlled                       
                             3                                                        
          interference filter) functions to vary the light of each                    
          wavelength depends to a large extent on the nature of the                   
          Raman laser cell to which it is coupled.  In short,  it is not              
          apparent to us where in the combined teachings of Piper and                 
          Kung one of ordinary skill in the art would have found a                    
          teaching of “controlling populations of multiple lasing energy              
          level transitions” to thereby control relative intensities, as              
          called for in the last paragraph of claim 1.                                


               Where prior art references require a selective                         
          combination to render obvious a claimed invention, there must               
          be some reason for the combination other than hindsight                     
          gleaned from the invention disclosure, Interconnect Planning                
          Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.                 
          Cir. 1985).  In the fact situation before us, we are unable to              


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