Appeal No. 1997-1430
Application No. 08/225,756
or mechanical equivalents. In re Ruff, 256 F. 2d 590, 118
USPQ 340 (CCPA 1958).
With respect to the Examiner’s second obviousness
rationale, however, we are of the view that the Examiner’s
analysis has at least satisfied the burden of presenting a
prima facie case of obviousness. In other words, the Examiner
has pointed out the prior art teachings of Fujihira and
Betzig, has reasonably indicated the perceived differences
between the prior art and the claimed invention set forth in
independent claims 14, 21, and 28, and has provided reasons
(Answer, page 5, section B) as to how and why the Fujihira’s
microscope would be modified by the substitution of the hook-
shaped probe of Betzig to arrive at the claimed invention.
After reviewing Appellants’ arguments in response, it is
our opinion that, to the extent any arguments have been
directed to the issue of the combinability of Fujihira and
Betzig, we find such arguments to be unpersuasive in
overcoming the Examiner’s prima facie case of obviousness.
Appellants’ arguments in the Briefs regarding the merits of
the teachings of Betzig center on the contention that Betzig’s
probe is a shear-force detecting probe rather than a light
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