Appeal No. 1997-3301
Application No. 08/159,879
examiner. See Brief, p. 13. We agree. First, the examiner
has failed to establish why one having an ordinary level of
skill in the art would have substituted the metallized glass
tubes of the Trotta chopper with the fresnel based diffusion
screens of Ohtaka and Suzuki. Despite the fact that Trotta,
Ohtaka and Suzuki are directed to diffusers in general, based
on the record before us, the combined teachings of Trotta,
Ohtaka and Suzuki fail to suggest the modification proposed by
the examiner.
The examiner has further failed to establish why one
having an ordinary level of skill in the art would have used a
method for producing optical disks as disclosed in Isono to
produce a diffusion screen as disclosed in Ohtaka and Suzuki.
On this record, it is unclear how any "improvements" of the
Isono method over the "prior art methods" relate to the
processes of Ohtaka and Suzuki. See In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984) ("The mere fact
that the prior art could be so modified would not have made
the modification obvious unless the prior art suggested the
desirability of the modification."); see also In re Gorman,
933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888 (Fed. Cir. 1991)
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