Interference No. 104,649
Page No. 28
ordinary skill would have been motivated to make such a modification since doing
so would produce a thinner, more compact device as suggested by Sibbald.
(Paper No. 24, p. 20).
It is well settled that "aprimafacie case of obviousness is established when the teachings
from the prior art itself would appear to have suggested the claimed subject matter to a person of
ordinary skill in the art." In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993)
(quoting In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)). Any
incentive, reason or motivation to modify the prior art references must flow from some teaching
in the art that suggests the desirability of making the modification needed to arrive at the claimed
invention. In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed Cir. 1995); In re
Gorman, 933 F.2d 982, 986-87, 18 USPQ2d 1885, 1888 (Fed. Cit. 1991). ("When it is necessary
to select elements of various teachings in order to form the claimed invention, we ascertain
whether there is any suggestion or motivation in the prior art to make the selection made by the
applicant. [Citations omitted] ...The extent to which such suggestion must be explicit in, or
may be fairly inferred from, the references, is decided on the facts of each case, in light of the
prior art and its relationship to the applicant's invention.").
As the moving party, Zhou has the burden of proof to show that it is entitled to the relief
sought in the motion. 37 CFR § 1.637(a). On the facts presented, Zhou has failed to demonstrate
that Sibbald suggests replacing its prism strip 44 with the prism sheet taught by Cobb. At best,
Sibbald teaches that the use of a Fresnel prism strip 44 allows for a more compact device than an
embodiment that employed a single prism 24. (See, e.g., ZX 2012, Figures 2 and 3 and col. 5,
lines 1-5). Thus, Sibbald already teaches the use of the prism strip and the replacement of
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