Appeal No. 1997-2990
Application 08/260,318
Since “the completely transparent” and “the completely
reflective” segments in lines 34 and 35 of claim 1 can only be
referring to the transparent and reflective segments recited
earlier in claim 1 as part of the optical beam splitter, we
agree with appellant that the artisan could not possibly fail
to understand the scope of the claimed invention. The
indefiniteness noted by the examiner is at most a technical
inconsistency which does not affect an artisan’s ability to
determine the scope of the claim. Therefore, we do not
sustain the examiner’s rejection of claim 1 under 35 U.S.C. §
112.
We now consider the rejection of claims 1 and 2 under
35 U.S.C. § 103. In rejecting claims under 35 U.S.C. § 103,
it is incumbent upon the examiner to establish a factual basis
to support the legal conclusion of obviousness. See In re
Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir.
1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and to provide a
reason why one having ordinary skill in the pertinent art
would have been led to modify the prior art or to combine
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