Appeal No. 1997-1430
Application No. 08/225,756
With respect to dependent claims 15, 22, and 29, our
earlier discussion indicated that the sole ostensible reason
for the Examiner’s inclusion of Barrett in the proposed
combination of references was to address the feature of
vertical vibration of the probe relative to the sample. Upon
careful review of Barrett, as well as the other applied
references to Fujihira and Betzig, we agree with Appellants
that no disclosure of any such vibrating feature exists in
this prior art. In our view, the control of probe scanning
along a Z-axis such as in Barrett and Fujihira does not equate
to a vertical vibrating movement as claimed. Further, the
Examiner’s contention (Answer, page 6) that the feature of
vibrating a probe relative to a sample is well known in the
art and, therefore, would lead the skilled artisan to utilize
such feature in sample analysis is totally without support on
the record. We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
may rely on less than the total number of applied references
in an obviousness rationale without designating it as a new
ground of rejection. In re Bush, 296 F.2d 491, 496, 131 USPQ
263, 266-67 (CCPA 1961); In re Boyer, 363 F.2d 455, 458, n.2,
150 USPQ 441, 444, n.2 (CCPA 1966).
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