Appeal No. 2001-2209
Application No. 09/019,158
emitting device. The Examiner recognizes and admits (Answer, page 4) that the admitted prior art
lacks a teaching of a device having an elliptically shaped lateral cross-section and, to address this
deficiency, the Examiner turns to Suehiro (Figure 1) which describes a light-emitting diode which is
constructed to have such an elliptical shape. According to the Examiner (id., at 5), the skilled
artisan would have been motivated and found it obvious to combine Suehiro’s teaching of an
elliptically shaped light-emitting diode structure with the admitted prior art “... because it would
improve the efficiency of the semiconductor light-emitting device.”
Appellants’ arguments (Brief, pages 8 and 9) in response to the obviousness rejection assert
that a prima facie case of obviousness has not been established since there is no suggestion or
motivation in the disclosures of the admitted prior art and Suehiro references for the Examiner’s
proposed combination. Upon careful review of the applied prior art in light of the arguments of
record, we are in general agreement with Appellants’ stated position in the Briefs. The mere fact
that the prior art may be modified in the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the desirability of the modification. In re Fritch,
972 F. 2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
In our view, while the Examiner asserts (Answer, page 6) that the applied prior art references
“... seek solutions to like problems in the art,” we find no evidence in the disclosure of the
references or elsewhere on the record that would support such a conclusion. For example, while the
Examiner is correct that the admitted prior art recognizes the problems attendant to increasing the
diameter of the light emitting device envelope while maintaining uniform spacing of the lead groups
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007