Appeal No. 1998-2465
Application No. 08/599,192
ambient or visible light noise to an optical device.
Therefore, one skilled in the art would almost
always consider a way to eliminate the effects of
ambient or visible light noise.
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." In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-4
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221, USPQ 1125, 1127 (Fed. Cir. 1984). As indicated above,
the examiner has provided no art suggesting the desirability
of the modification.
It is further established that "[s]uch a suggestion may
come from the nature of the problem to be solved, leading
inventors to look to references relating to possible solutions
to that problem." Pro-Mold & Tool Co. v. Great Lakes
Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed.
Cir. 1996), citing In re Rinehart, 531 F.2d 1048, 1054, 189
USPQ 143, 149 (CCPA 1976) (considering the problem to be
solved in a determination of obviousness). Since Tregay
discloses the same problem solved by appellant, i.e., that
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