Ex parte SUZUKI - Page 7




          Appeal No. 1997-2849                                                        
          Application No. 08/348,811                                                  


          1976) (considering the problem to be solved in a determination              
          of obviousness).  The Federal Circuit reasons in  Para-                     
          Ordnance Mfg. Inc. v. SGS Importers Int'l Inc., 73 F.3d 1085,               
          1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert.                    
          denied, 519 U.S. 822 (1996), that for the determination of                  
          obviousness, the court must answer whether one of ordinary                  
          skill in the art who sets out to solve the problem and who had              
          before him in his workshop the prior art, would have been                   
          reasonably expected to use the solution that is claimed by the              
          Appellant.  However, "[o]bviousness may not be established                  
          using hindsight or in view of the teachings or suggestions of               
          the inventor."  Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d              
          at 1239, citing W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ                
          at 311, 312-313.                                                            
               Upon our review of Tokumaru, we find that Tokumaru                     
          discloses  all the claim limitations recited in Appellant's                 
          claim 1 except for a "displacement means for attaining                      
          vibration reduction by moving said third lens group . . . in a              
          direction substantially perpendicular to an optical axis."  We              
          further find that Umeda teaches a zoom lens comprising a first              
          lens group, a second lens group, a third lens group and a                   

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