Appeal No. 1996-1387 Page 21
Application No. 08/110,269
We cannot find that the combination of Majima in view of
Naemura teaches or would have suggested the holographic
diffuser of claim 20. The claim specifies in pertinent part
“[a] video display, comprising: a) an image generation system
which includes ... a holographic diffuser associated with the
screen ....”
The Examiner erred by not identifying a proper suggestion
supporting the proposed addition of a holographic diffuser to
the claimed combination of elements. Rather than providing a
line of reasoning to explain why such an addition would have
been desirable, he merely relies on the fact that the
holographic diffuser was well known in the art. The fact that
an element was well known, however, does not render its
addition per se obvious as the examiner’s rejection might
imply. A suggestion of the desirability of using the element
to modify references must be shown. The examiner did not show
this.
For the foregoing reasons, the examiner has not
established a prima facie case of obviousness. Therefore, we
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