Appeal No. 96-2953
Application 08/258,565
The Examiner responds:
[T]he examiner was paraphrasing numerous
reference[s] in the optical measuring and
testing arts [as] motivation for having a
lens. The use of a lens and the placement
of a lens in a system for focusing light
onto a detector is conventional and
obvious. The appellant is reminded that
motivation for combining references need
not be explicitly found in references
themselves, and the examiner may provide
[an] explanation based on logic and sound
scientific reasoning that will support a
holding of obviousness. Also, that the
test for obviousness under 35 USC § 103 is
what the combined teachings of the applied
references, when taken as a whole, would
have suggested to one of ordinary skill in
the art. (Underlining added) (Answer at
pages 7 and 8.)
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg. v. SGS
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