Appeal No. 1998-1472 Page 21
Application No. 08/427,721
be presumed to know something” about the art “apart from what
the references disclose.” In re Jacoby, 309 F.2d 513, 516,
135 USPQ 317, 319 (CCPA 1962). With these principles in mind,
we consider the appellants’ argument and the examiner’s reply.
The appellants argue, “the requisite motivation for
combining the teachings of the cited references has not been
provided.” (Reply Br. at 5.) The examiner’s reply follows.
“[I]t would have been obvious ... to modify Bjorklund
such that the reference beam #2 illuminating the
medium is a plane-wave light beam, as taught by
Takeda. A practitioner in the art would have been
motivated to do this for the purpose of increasing
the size of the volume hologram within the medium,
thereby making subsequent detection of the hologram
easier.” The examiner's point of this combination
was that the lens in the path of reference beam #2 of
Bjorklund is not necessary in view of Takeda. If the
lens were removed, in accordance with the teachings
of Takeda, then a plane-wave would illuminate the
optical disk instead of a converged beam.
(Examiner’s Answer at 6.)
“Obviousness may not be established using hindsight or in
view of the teachings or suggestions of the inventor.”
Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239 (citing
W.L. Gore & Assocs., Inc., 721 F.2d at 1551, 1553, 220 USPQ at
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