Appeal No. 95-3725
Application 07/944,318
combination was known to be part of a prior art camera and strobe
combination. Since each of the claimed elements was individually
known in the prior art combination, the examiner formulated the
question as follows:
[W]hether it would have been unobvious
to one having ordinary skill in the art
to place the motor in an elongated space
in the camera and to provide the circuit
board in the shape of an L so that it
fits around the motor. That is, would
it have been unobvious to have made the
circuit board so that it fits into the
available space. [answer, pages 4-5]
It is noteworthy that the question as rephrased by the examiner
is totally different from the question initially posed. The
first question comes close to considering the obviousness of the
invention based on actual claim recitations whereas the rephrased
question relates only to a concept rather than the recitations of
the claims. By posing the question as to whether it would
generally be obvious to fit components into an available space,
the examiner has neatly made it impossible to patent any
technique which seeks to attain that goal no matter how claimed.
It was error for the examiner to consider the patentability of
his own concept of the invention rather than the invention as
specifically set forth in the claims.
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