Appeal No. 2000-0737
Application No. 08/919,795
The burden initially is on the examiner to show a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Here, it is considered
that the examiner has not carried that burden. More
specifically, with respect to Figure 4 of Clark, it is
considered that the examiner has not provided a motivation or
suggestion as to why one of ordinary skill in the art would have
modified Clark by substituting two lenses, a collimating lens in
fitting 27 and a focusing lens in fitting 28, for the lens 22 in
fitting 27. The examiner’s observation that the two proposed
lenses are equivalent to and would perform the same function as
Clark’s lens 22 is not controlling because that fact, by itself,
is not motivation to make the change suggested by the examiner.
In fact, no motivation for making the suggested changes in Clark
has been given in the answer.
Even if one were to substitute the equivalent pair of
lenses suggested by the examiner into Clark for lens 22, both
lenses would have been positioned in fitting 27, because that is
wherein lens 22 is located. No motivation has been given for
placing a collimating lens in fitting 27 and a focusing lens in
fitting 28.
The fact that Clark may have been modified in the manner
suggested by the examiner does not make the modification obvious
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