Ex parte LACKIE - Page 9




          Appeal No. 1996-3504                                                        
          Application No. 08/265,648                                                  


          optical devices embodied in the claimed measuring means.  The               
          examiner has not supplied any rationale as to why the Bauman                
          reference would have rendered the claimed measuring means                   
          prima facie obvious to one of ordinary skill in the art.                    
          Since the examiner has not carried his burden of establishing               
          a prima facie case of obviousness, we reverse this rejection                
          as well.                                                                    
               Further, the examiner has rejected claims 5 and 35 under               
          35 U.S.C.  103 as unpatentable over the combined disclosures               
          of Leif and Schrader.  For the reasons set forth at pages 6                 
          through 9 of the Brief and pages 2 through 4 of the Reply                   
          Brief, we agree with appellants that it would not have been                 
          obvious to one of ordinary skill in the art to remove an                    
          orifice in the device of Leif to provide “a conduit means                   
          having substantially uniform surface ... extending the entire               
          length through the lens means for passage of liquid sample                  
          therethrough.”  To modify the device of Leif as proposed by                 
          the examiner, i.e., remove an orifice, is to destroy the                    
          invention on which Leif is based.  See Ex parte Hartmann, 186               




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