Interference No. 104,649
Page No. 41
mirrors to fold the emitted radiation so as to change the ratio between the maximum length and
maximum width of the system. (Paper No. 27, p. 6).
Keagy argues that Ranalli '448 teaches a device that has the folding of light by mirrors.
According to Keagy, the mirrors of Ranalli allow for a fingerprint system with a shorter length
such that the subject matter of Zhou claim 14 is obvious in view of the subject matter of Zhou
claim 10. (Keagy Opposition 4, Paper No. 37, pages 7-8). Specifically, Keagy alleges that
Ranalli discloses and teaches:
[A]n optical system with mirrors to fold emitted radiation so as to change the
"ratio between the maximum length and maximum width of the sensing system"
as taught in Zhou '858 and claimed in claim 14.
(Paper No. 37, pages 8-10). From this, Keagy concludes that it "Would have been obvious to use
mirrors to fold the radiation in the claim 10 subject matter if one wished to have a more compact
device." (Paper No. 37, p. 10, emphasis added). Additionally, Keagy cites Chen '649 as
teaching the use of a detector array having a smaller width than the width of the sheet prism and
a dernagnification of the image. (Paper No. 37, p. 6).
Obviousness must be based upon objective evidence of record and requires that particular
findings be made as to why a skilled artisan, with no knowledge of the claimed invention, would
have selected the specific components for combination in the manner claimed. Specifically, the
Federal Circuit has stated that:
"The factual inquiry whether to combine references must be thorough and
searching." Id. [McGinley v. Franklin Sports, Inc., 262 F.3d 1339, 1351-52, 60
USPQ2d 1001, 1008 (Fed. Cit. 2001)] It must be based onab.jective evidence of
record. This precedent has been reinforced in myriad decisions, andư cannot be
dispensed with. See, e.g., Brown & Williamson Tobacco Corp. v. Philip Morris
Inc., 229 F.3d 1120, 1124-25, 56 USPQ2d 1456, 1459 (Fed. Cir. 2000) ("a
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