Appeal No. 1998-1925 Page 5
Application No. 08/430,956
of intensity so as to protect a light-sensitive object, that Murphy teaches this objective also
can be accomplished by a protective element that utilizes a cell having a chamber with
spaced inner walls having a roughened glass surface and containing a solution responsive
to the heat present in an applied incident light beam, and that Wood discloses both
thermal defocusing and nonlinear scattering as being means for reducing the intensity of
focused incident light beams and “recommends using a combination of these passive
optical limiting systems to provide better high power limiting and grater [sic] dynamic
range than any one device alone can achieve,” and “[t]hermal defocusing is recommended
to be the first limiter” (Answer, pages 3 and 4). Therefore, the examiner concludes, one of
ordinary skill in the art would have found it obvious to construct the system recited in the
appellants’ claim 1 (Answer, page 5). The appellants, as can be expected, offered
arguments in opposition to the examiner’s point of view.
Applying the guidance provided by our reviewing court for evaluating a rejection
2
under 35 U.S.C. § 103, we find ourselves in agreement with the appellants that the
2The test for obviousness is what the combined teachings of the prior art would
have suggested to one of ordinary skill in the art. See In re Keller, 642 F.2d 413, 425, 208
USPQ 871, 881 (CCPA 1981). However, the mere fact that the prior art structure could be
modified does not make such a modification obvious unless the prior art suggests the
desirability of doing so. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127
(Fed. Cir. 1984). The initial burden of establishing a basis for denying patentability to a
claimed invention rests with the examiner. See In re Piasecki, 745
F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984).
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007