Appeal No. 2003-0261
Application No. 09/126,203
at 1617, citing McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27
USPQ2d 1129, 1131 (Fed. Cir. 1993). The Federal Circuit states that, “[t]he mere fact
that the prior art may be modified in the manner suggested by the Examiner does not
make the modification obvious unless the prior art suggested the desirability of the
modification.” In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). In addition, our reviewing court stated in Lee, 277 F.3d at 1343, 61
USPQ2d at 1433, that when making an obviousness rejection based on combination,
“there must be some motivation, suggestion or teaching of the desirability of making the
specific combination that was made by Applicant” (quoting In re Dance, 160 F.3d 1339,
1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
The examiner asserts on page 4 of the answer that Fontenot et al. teach that the
filters in the color wheel embodiment (figure 4) and the liquid crystal shutter
embodiment (figure 6) transmit light in both the visible spectrum and infrared. On page
5 of the answer the examiner further states
The knowledge within the ordinary skill in the art that color pass filters of the
type that Fontenot et al.describes at page 18, lines 1-11, or a liquid crystal color
shutter filter of the type that Fontenot et al. describes at page 21, line to page 22
line 5, do(es) not pass color only as asserted by Appellant but instead routinely
pass(es) infrared radiation is long-standing. See Figs. 4, 5, and 6 of Yamakawa
which show that color pass filters include significant infrared transmission. See
also Fig. 5 of Dillon et al. which shows that color pass filters include significant
infrared transmission. Sharp et al. confirms that a filter of the type illustrated by
Fontenot et al. in fig. 6 would have significant transmission in the infrared even
when combined (see Figs. 4 and 5). Accordingly, one of ordinary skill in the art
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