Appeal No. 1998-0146
Application 08/407,058
Yamamoto or Sugano (Br7-10). Reasons are provided why one
of ordinary skill would not have modified Yamamoto to move
the lens toward and away from the brush to accommodate
shorter brush strands (Br12).
We agree with the Examiner's obviousness conclusion,
but not with his statement of motivation. There is no
teaching in Yamamoto or Sugano that strands falling off the
brush were a problem, or that combining Yamamoto and Sugano
would have been a solution to the problem. It harms the
Examiner's rejection to make up reasons which are
unsupported by facts in the record because it looks like
hindsight to invent reasons to combine. In this case, it is
sufficient that one of ordinary skill in the art was taught
to clean the objective lens by radial movement in Yamamoto
and by up-and-down movement in Sugano. Each type of
movement produces a different kind of cleaning of the lens.
One of ordinary skill in the art would have been motivated
to combine the individual teachings of Yamamoto and Sugano
to produce a device which achieves the benefits of each type
of cleaning. Cf. In re Kerkhoven, 626 F.2d 846, 850,
205 USPQ 1069, 1072 (CCPA 1980) ("It is prima facie obvious
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