Appeal No. 2001-1936
Application 09/049,478
4, lines 35-39. From our study of both references, Kuroda does
not indicate to us nor do we believe it would have so indicated
to the artisan that the disputed RF feature of the independent
claims on appeal would have been necessarily inherent within
Ceshkovsky. On the other hand, Kuroda may be evidence that it
would have been obvious to the artisan within 35 U.S.C. § 103 to
have implemented the optical pick-up and related structures in
Ceshkovsky according to the RF teachings noted by the examiner in
Kuroda at column 4, lines 35-39. This, however, has not been
presented to us as a stated rejection of the claims on appeal.
Since the examiner's positions with respect to inherency in
Ceshkovsky do not persuade us of the inherency of the disputed RF
feature of each claim on appeal, but rather present evidence to
us that the claimed feature may have been obvious to the artisan
within 35 U.S.C. § 103, we note the examiner should consider
setting forth new rejections within 35 U.S.C. § 103 based upon
Kuroda, and possibly any additional prior art the examiner may
choose to rely upon. On the other hand, the existing rejection
before us of claims 1-15 considered by the examiner to have been
obvious within 35 U.S.C. § 103 over Ceshkovsky in view of Maeda
must be reversed.
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