Appeal No. 1999-1656
Application No. 08/638,759
We find appellant’s arguments convincing, and consider the proposed combination
to be not well founded. Nose deals with problems inherent in diffracted light which is
decidedly not collimated (e.g., not parallel); see Figures 4 and 5, with the accompanying
description. While the “diffractive elements” of Hugle might “introduce higher orders of light
which are unaffected by the field lenses” (Answer at 10), we consider the position to be
speculative in view of the objective teachings of the two references before us. Nor is there
sufficient evidence that combining “several lens arrays in series...to correct for the effect of
chromatic aberration” (Hugle at col. 9, ll. 36-37) would lead the artisan, in view of the
teachings of Nose, to replace or complement a field lens array as disclosed by Hugle.
The allocation of burdens requires that the USPTO produce the factual basis for its
rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011,
1016, 154 USPQ 173, 177 (CCPA 1967)). We consider the references applied
insufficient to support the ultimate conclusion of prima facie obviousness, and cannot
sustain the section 103 rejection of claims 1, 3, 4, and 7-12.
CONCLUSION
The rejection of claims 2, 5, and 6 under 35 U.S.C. § 102 as being anticipated by
Nose is affirmed. The rejection of claims 1, 3, 4, and 7-12 under 35 U.S.C. § 103 as being
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