Appeal No. 1998-0180
Application No. 08/471,309
shown in Figure 7 of the reference. However, since the examiner’s statement of rejection was
ambiguous, we will assume that the thrust of such a rejection was not understood by appellant.
Upon our review of the evidence of record we are unconvinced that a prima facie case of
obviousness of Claim 1 has been established. There is insufficient factual basis to show that the artisan
would have been motivated to design the relevant dispersions to be substantially the same. The
examiner appears to rely on an “admission” in appellant’s specification (within the Brief Summary of
Invention). (See Final Rejection, page 6.) Appellant’s description of his invention in his specification is
not prior art, and cannot serve as any sort of evidence upon which a prima facie case of obviousness
may be based.
That “dispersion is a recognized phenomenon” (id. at 5) does not end the obviousness enquiry.
“That the claimed invention may employ known principles does not in itself establish that the invention
would have been obvious. Most inventions do.” Lindemann Maschinenfabrick GMBH v. American
Hoist & Derrick Co., 730 F.2d 1452, 1462, 221 USPQ 481, 489 (Fed. Cir. 1984).
In summary, although we agree with the examiner that Liu discloses a first and a second coaxial
waveguide, the rejections over the reference are deficient in that: (1) there is insufficient evidence of
record to show that the dispersion of the TE mode in waveguide 54 is, of necessity, approximately the
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same as the dispersion of the TE mode in waveguide 56 (with respect to anticipation); and (2) there is
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insufficient evidence of record that the artisan would have been motivated to design the waveguides
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