Ex parte GOTO - Page 5





            Appeal No. 95-2948                                                                                                     
            Application 07/833,664                                                                                                 

                    Claims 1-4 and 18-22 stand rejected under 35 U.S.C.  103 as being unpatentable over                           
            Singh and Bard or Dvorkis.  The examiner's only statement of the rejection is the following (first                     
            Office action entered March 29, 1993, Paper No. 6):                                                                    
                    It would have been obvious to one of ordinary skill in the art at the time the invention was                   
                    made to employ the vibrating scanner component of Bard or Dvorkis with the rotating                            
                    reflection of Sinch [sic] for the purpose fo [sic] vibrating mirror drive under the rationale                  
                    of the interchangeability of teachings of similar systems.                                                     

                                                       OPINION                                                                     
                    We affirm-in-part.                                                                                             
                    The examiner does not explain how Singh is being combined with Dvorkis or Bard.  It is                         
            not apparent why the artisan would have wanted to substitute the vibrating scanning mirror from                        
            Dvorkis or Bard into Singh and it is not clear what Singh adds to Dvorkis or Bard.  The                                
            Examiner's Answer mentions only Dvorkis and accordingly this decision will focus mainly on                             
            Dvorkis which we consider the most relevant reference.                                                                 
                    The level of ordinary skill is not argued, so we find the references to be representative of                   
            the level of skill in the art.  See In re Oelrich, 579 F.2d 86, 91, 198 USPQ 210, 214 (CCPA 1978)                      
            ("the PTO usually must evaluate both the scope and content of the prior art and the level of                           
            ordinary skill solely on the cold words of the literature").  Cf. Chore-Time Equipment Inc. v.                         
            Cumberland Corp., 713 F.2d 774, 779 n.2, 218 USPQ 673, 676 n.2 (Fed. Cir. 1983) ("We hold                              
            only that an invention may be held to have been obvious (or nonobvious) without a specific finding                     
            of a particular level of skill in the art where, as here, the prior art itself reflects an appropriate level           

                                                          - 5 -                                                                    





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  Next 

Last modified: November 3, 2007