Ex Parte Byren et al - Page 4

               Appeal 2007-0203                                                                             
               Application 10/139,969                                                                       
                                                                                                           
               determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148                    
               USPQ 459, 467 (1966).  If that burden is met, the burden then shifts to the                  
               Appellants to overcome the prima facie case with argument and/or evidence.                   
               Obviousness is then determined on the basis of the evidence as a whole and                   
               the relative persuasiveness of the arguments.  See In re Oetiker, 977 F.2d                   
               1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).                                           
                      Regarding independent claims 22-24, the Examiner's rejection                          
               essentially finds that Presby teaches every claimed feature except for (1)                   
               using lenses instead of mirrors as disclosed in Presby, and (2) moving the                   
               secondary lens instead of the primary lens as in Presby.  The Examiner,                      
               however, notes that Presby teaches using lenses in lieu of mirrors in  0028                 
               of the reference.  The Examiner also notes that deforming any mirror/lens,                   
               not necessarily the primary mirror/lens, achieves the same result and would                  
               have been apparent to one of ordinary skill in the art.   The Examiner then                  
               concludes that it would have been obvious to one of ordinary skill in the art                
               at the time of the invention to use lenses instead of mirrors and deform the                 
               secondary lens instead of the primary lens in Presby to utilize functionally                 
               equivalent optical elements for specific applications or environments                        
               (Answer 2-6).                                                                                
                      Appellants argue that the movable lens element of the claimed                         
               invention is not the functional equivalent of Presby’s deformable mirror.                    
               Although Appellants concede that substituting a fixed, non-deformable                        
               secondary lens for the fixed secondary mirror of Presby would constitute a                   
               case where lenses could be used as the functional equivalent of mirrors as                   
               Presby teaches, Appellants emphasize that a movable lens element as                          



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