Appeal No. 2001-2201
Application .09/065, 997
motivation to make the modification is the same motivation as
Appellant’s. In In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309,
1311 (Fed. Cir. 1996) citing In re Dillon, 919 F.2d 688, 693, 16
USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc), our reviewing court
states:
[a]lthough the motivation to combine here differs from that
of the applicant, the motivation in the prior art to combine
the references does not have to be identical to that of the
applicant to establish obviousness.
As such, the Examiner has cited column 2, lines 20 through 24 of
Tanaami and column 3, line 65 through column 4, line 4 of Kino to
teach including a baffle behind a pinhole of a confocal
microscope in order to reduce stray light. More importantly,
Appellant has not demonstrated why one skilled in the art would
not have been motivated to use the teachings of Kino and Tanaami
with the Appellant’s admitted prior art. Rather, Appellant has
focused his arguments on the different reasons why Appellant and
the Kino and Tanaami references have the baffle behind the
pinhole.
Additionally, Appellant admits on page 3, lines 46 through
page 4, line 3 and associated Figure 2C of Appellant’s
specification, that placement of a baffle behind the pinhole
blocks out-of-focus light and improve z-axis resolution. As
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