Appeal No. 1998-1441
Application No. 08/294,779
Winsor shows an embodiment (Fig. 1) whereby a mirror and aperture assembly 26
is driven horizontally by lead screw 54 and stepping motor 56, with the mirror reflecting the
light beam to color negative film 2 on drum 4. See Winsor, column 2, line 41 through
column 3, line 19. Winsor discloses a second embodiment (Fig. 7) whereby the mirror and
aperture assembly 26c is fixed while rotating drum 4c is moved longitudinally by means of
stepping motor 142 and lead screw 138. See id. at column 5, line 61 through column 6,
line 20.
However, Winsor teaches that the second embodiment is preferred for producing
images of best quality, because the beam travels a fixed length. See id. We recognize
the possibility that the teaching of preference may be limited to the disclosed arrangement
of using three beams. Winsor at column 3, lines 13-15 stresses the criticality of the three
beams being maintained coincident. However, it is not apparent in the four corners of the
reference that the teaching of preference is so limited.
Winsor does not show equivalence; if anything, Winsor suggests that the layout of
Tsukada, in which the length of the light beam remains relatively fixed, is the preferred
arrangement. We are cognizant that in a section 103 inquiry "’the fact that a specific
[embodiment] is taught to be preferred is not controlling, since all disclosures of the prior
art, including unpreferred embodiments, must be considered.’" Merck & Co. v. Biocraft
Labs., Inc., 874 F.2d 804, 807, 10 USPQ2d 1843, 1846 (Fed. Cir. 1989) (quoting In re
Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976)). However, the
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