Appeal No. 1998-1925 Page 7
Application No. 08/430,956
that the Wood teachings would have motivated one of ordinary skill in the art to do anything
more. Two separate devices in series is a far cry from the hybrid optical limiter recited in
claim 1, which requires that a first optical means focus an incident light beam to “a” focal
point, that “a” protective element be disposed near “the” focal point, and that “said”
protective element respond to an intensity of light below a predetermined first intensity by
allowing the entire beam to pass through, to an intensity of light between the first intensity
and a second intensity higher than the first by defocusing the light so that only a small
portion is allowed to pass, and to a third intensity higher than the second predetermined
intensity by scattering the light in all directions to decrease the intensity below the damage
threshold of the sensitive object. In sum, we fail to perceive any teaching, suggestion or
incentive in the references which would have led one of ordinary skill in the art to combine
them in the manner proposed by the examiner; from our viewpoint, such is found only in the
hindsight afforded one who first viewed the appellants’ disclosure which, of course, is not a
proper basis for a rejection. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784
(Fed. Cir. 1992).
It thus is our conclusion that the combined teachings of the references applied
against claim 1 in this rejection fail to establish a prima facie case of obviousness with
regard to the subject matter recited therein, and we will not sustain the rejection of claim 1
or of claims 2-15, which depend therefrom.
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