Appeal No. 96-0069
Application 08/110,493
U.S.C. § 103. First, the examiner must identify all the
differences between the claimed invention and the teachings of
the prior art. Second, the examiner must explain why the
identified differences would have resulted from an obvious
modification of the prior art. In our view, the examiner has not
properly addressed his first responsibility so that it is
impossible that he has successfully fulfilled his second
responsibility.
It is not entirely clear from the examiner’s rejection
just what the perceived differences are between claim 13 and the
teachings of Koechner. The examiner notes that the slab type
laser in Koechner can be pyramidal or the like in configuration
[answer, page 5]. The examiner concludes that it “would have
been obvious to one of ordinary skill in the art at the time the
invention was made to use [the] teaching of both references for a
laser apparatus, as claimed if so desired” [answer, page 6].
Appellants argue that Koechner does not disclose a solid
regular pyramid as recited in claim 13 [brief, page 7]. More
specifically, appellants argue that the truncated pyramids of the
applied prior art would not have suggested the specific solid
pyramid as recited in the claims [reply brief, page 1].
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