Appeal No. 1998-2009
Application No. 08/508,250
We acknowledge that the Examiner cites Figure 19 of
Tatsuno as a two lens (pair) system (answer-page 5). However,
contrary to the Examiner’s contention, neither expander lens
136 nor condensing lens 137 meets the collimating lens
claimed, nor is the claimed distance between the lenses
satisfied.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). "Obviousness may
not be established using hindsight or in view of the teachings
or suggestions of the inventor." Para-Ordnance Mfg. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
In view of the forgoing, we will not sustain the
Examiner’s rejection of independent claims 1 and 5.
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