Appeal No. 2000-0948 Page 6
Application No. 08/511,341
and content of the prior art are determined, the differences
between the prior art and the claims at issue are to be
ascertained. Graham v. John Deere Co., 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966). However, in the rejection before us,
the examiner did not ascertain the differences between the
prior art and claim 1 ion appeal. The examiner did determine
(answer, pp. 3-4) that it would have been obvious to the
artisan of ordinary skill to use 3 micron and 6 micron light
in the method of Feld since both of these work well for
removing various types of tissue, as taught by Edwards, and to
employ an OPO using AgGaSe since this can produce 6 micron
2
pulses of reasonable power while remaining below the damage
threshold of the material as taught by Eckardt, thus producing
a device as claimed.
Obviousness is tested by "what the combined teachings of
the references would have suggested to those of ordinary skill
in the art." In re Keller, 642 F.2d 413, 425, 208 USPQ 871,
881 (CCPA 1981). But it "cannot be established by combining
the teachings of the prior art to produce the claimed
invention, absent some teaching or suggestion supporting the
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