Appeal No. 1998-1472 Page 14
Application No. 08/427,721
beam” or “creating a holographic grating at selected ones of
the plural locations within the disk using a plane-wave light
beam in conjunction with a counterpropagating focused light
beam.” The examiner has impermissibly relied on the
appellants’ teachings or suggestions; he has not established a
prima facie case of obviousness. Therefore, we reverse the
rejection of claims 1-3, 5, 34, 35, 96-98, 101, 106-108, 110,
114, 116, 174-176, and 178 under 35 U.S.C. § 103(a) as obvious
over Bjorklund in view of Takeda; the rejection of claims 4
and 177 under 35 U.S.C.
§ 103(a) as obvious over Bjorklund in view of Takeda further
in view of Murakami; and the rejection of claims 99, 109, and
115 under 35 U.S.C. § 103(a) as obvious over Bjorklund in view
of Takeda further in view of Hugle. Next, we address the
grouping of claims 142, 143, 151, 152, 166, 168, and 171.
Grouping of Claims 142, 143, 151,152, 166, 168, and 171
When the appeal brief was filed, 37 C.F.R. § 1.192(c)(7)
(1997) included the following provisions.
For each ground of rejection which appellant
contests and which applies to a group of two or more
claims, the Board shall select a single claim from
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