Appeal No. 1998-0823
Application 08/630,542
suggest selectively deflecting the available light to only one
of two camera ports. On pages 22 to 25 of the Brief,
Appellants argue that the asserted combination of Heimstadt,
Muller, Braymer, and either Minami or Kleinberg fails to teach
the invention of claims 30 and 35 essentially because Muller,
Minami and Kleinberg are directed to low power surgical
microscopes, and Braymer is directed to a telescope, such
devices asserted to be unrelated to Appellants’ invention,
characterized as a "high power microscope."
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the
prior art suggested the desirability of the modification."
Fritch, 972 F.2d at 1266, 23 USPQ2d at 1783-84, citing Gordon,
733 F.2d at
902, 221 USPQ at 1127. "Obviousness may not be established
using hindsight or in view of the teachings or suggestions of
the inventor." Para-Ordnance, 73 F.3d at 1087, 37 USPQ2d at
1239, citing W. L. Gore & Assocs., 721 F.2d at 1551, 1553, 220
12
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007