Appeal No. 1997-1766 Application No. 08/245,033 column 2, lines 60 through 63, that "though the embodiment is not illustrated in connection with the image magnification varying function, say the zoom lens, it is to be understood that the present invention is applicable also to zoom lenses." However, we note that Kitagishi does not teach how the application to zoom lenses would be done. Upon our consideration of all the references as to what they teach and suggest to those skilled in the art, we find that the references suggest to those skilled in the art that at best one would be able to apply a vibration reduction device to a zoom lens system having five separate lens units. However, the teachings as a whole would only suggest to those skilled in the art that any one of these lens units may be decentered. The art would not suggest to those skilled in the art that it would be optimal to only decenter the second lens unit. As Appellant's disclosure supports, Appellant has discovered that it is only by decentering the second lens unit that one obtains the benefits as disclosed. Therefore, we find that the Examiner has failed to establish a prima facie case that one of ordinary skill in the art would have modified either the Ogawa five-unit zoom lens or the Ishii five-unit -12-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007