Ex parte SUZUKI - Page 12




          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                 

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