Appeal No. 97-0544 Page 7
Application No. 08/177,108
interpretation, it requires the CGH to do more than form an
image on a substrate. The claim also requires the CGH to
produce converging, coherent light.
We note three principles from In re Rijckaert, 9 F.3d
1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir. 1993). (1) In
rejecting claims under 35 U.S.C. § 103, the patent examiner
bears the initial burden of establishing a prima facie case of
obviousness. (2) A prima facie case is established when
teachings from the prior art would appear to have suggested
the claimed subject matter to a person of ordinary skill in
the art. (3) If the examiner fails to establish a prima facie
case, an obviousness rejection will be reversed.
The examiner fails to show a teaching or suggestion of a
CGH that both produces converging, coherent light and forms an
image on a substrate as claimed. To the contrary, he admits
that Smith’s phase masks, on which he reads the claimed CGH,
“have the advantage of being diffractive elements ....”
(Examiner’s Answer at 4 (emphasis added).) Similarly, the
examiner admits, “The benefit of the use of computer generated
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