Appeal No. 96-1555
Application 08/229,619
the base surface.
The Examiner's reliance on "routine skill in the art" is
mere conclusion and is not supported by any factual evidence
of what knowledge was within the level of ordinary skill in
the art. See In re Kaplan, 789 F.2d 1574, 1580, 229 USPQ 678,
683 (Fed. Cir. 1986) ("Even if obviousness of the variation is
predicated on the level of skill in the art, prior art
evidence is needed to show what that level of skill was.").
The Examiner's reliance on the concept of "design choice"
to fill in the missing teachings of the references is not
persuasive. "Design choice" has been used where the
differences appear to be a matter of choice by the designer in
doing something one way rather than another and solve no
stated problem and do not result in a different function or
give unexpected results. See In re Chu, 66 F.3d 292, 298-99,
36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995). Reliance on design
choice is discouraged as a substitute for factual evidence and
sound obviousness reasoning. Since the specific physical
shape and arrangement of mirrors provides a different function
and result in this case, and since the Examiner has not shown
(but has merely concluded) that the selection of mirror shape
- 7 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007