Appeal No. 94-3631
Application 07/883,513
teaching, suggestion or implication in the prior art as a whole or knowledge generally available to
one having ordinary skill in the art. Uniroyal Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5
USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v. Montefiore Hospital, 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the examiner are an
essential part of complying with the burden of presenting a prima facie case of obviousness. Note
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
The examiner’s position with respect to claims 1-15 is that Concannon teaches a check
processing system which has every feature of these claims except for the illumination source being
a Lambertian illumination source. The examiner finds that Concannon suggests that other
illumination sources may be used [answer, page 3]. Chadwick teaches the use of a quasi-
Lambertian illumination source in a device for optically inspecting printed wiring boards. The
examiner concludes that it would have been obvious to use the Chadwick Lambertian illumination
source in the Concannon check processing system because “both systems are primarily concerned
with obtaining images, comparing images and for having a uniform illumination of the object,” and
such modification would have been a routine design choice [answer, pages 3-4].
Appellants respond that the examiner has ignored several specific recitations of these claims,
and that there is no teaching on how to combine Concannon and Chadwick. According to
appellants, the artisan looking for an alternative light source in Concannon would never turn to
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