Appeal No. 2003-1551
Application No. 09/550,713
that the examiner has not pointed to a single teaching,
suggestion or motivation in the prior art to make the necessary
modifications of Mitsutake that would arrive at the claimed
invention [reply brief, pages 2-5].
We do not sustain the examiner’s rejection of independent
claims 1, 7 and 9 because the examiner has failed to establish a
prima facie case of obviousness. Most importantly, the examiner
has identified a difference between Mitsutake and the claimed
invention, which in fact does not exist, and the examiner’s
proposed modification of Mitsutake to overcome this alleged
difference makes no sense. First, the examiner’s finding that
Mitsutake does not teach a half-wave plate is misplaced because
claims 1, 7 and 9 do not claim a half-wave plate. The claims
recite, instead, a half wavelength delay. Although Mitsutake
does in fact disclose a quarter-wave plate 27 in Figure 5, the
light beam Ls passes through the quarter-wave plate twice so that
the light beam Ls is in fact delayed by a half wavelength delay
as claimed. Since Mitsutake already performs the half wavelength
delay recited in the claimed invention, replacing the quarter-
wave plate of Mitsutake with a half-wave plate, as proposed by
the examiner, would render the Mitsutake device inoperative for
its intended purpose. Because the examiner has improperly
-7-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007