Appeal No. 1997-1430
Application No. 08/225,756
recognize the well known advantages of vibrating a probe or
sample to assist in analysis of the sample.
In response, Appellants’ arguments are primarily directed
to the contention that the Examiner has failed to establish a
prima facie case of obviousness since no support for the
Examiner’s assertion of functional equivalence has been
provided. Appellants further argue (Reply Brief, page 10)
that, even assuming the functional equivalence of the probe
tips of Fujihira and Betzig, the mere existence of functional
equivalence does not establish obviousness.
After careful review of the prior art in light of the
arguments of record, we agree with Appellants that the
Examiner has not established support for a conclusion of art
recognized functional equivalence. The mere fact that two
elements are used for the same purpose or, in the Examiner’s
words (Answer, page 5) "... both desire the same thing...",
does not establish art recognized functional equivalence. In
order to rely on equivalence as a rationale for supporting an
obviousness rejection, the equivalency must be recognized in
the prior art, and cannot be based on applicant’s disclosure
or the mere fact that the components at issue are functional
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