Appeal No. 2005-1942 Page 5
Application No. 10/173,938
applicant to overcome the prima facie case with argument and/or
evidence. Obviousness is then determined on the basis of the
evidence as a whole. See id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The examiner's position (answer, pages 3 and 4) is that
Mukasa teaches every aspect of the claimed invention except for
the housing having a cavity. To overcome this deficiency of
Mukasa, the examiner turns to Keys for a teaching of a
“dispersion compensating module having a housing with a cavity.”
Appellants' position (brief, page 6) is that the purported
modification does not teach, disclose or otherwise suggest all of
the limitations of claim 1. It is further asserted (id.) that an
artisan would not have been motivated to combine or modify the
teachings of the ‘126 patent (Mukasa) with the ‘773 patent (Keys)
because the ‘126 patent (Mukasa) expressly teaches away from the
configuration/architecture of the ‘773 patent (Keys).
From our review of the references of record, we are in
general agreement with appellants, for the reasons which follow,
that the teachings of Mukasa and Keys would not have suggested
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