Appeal No. 2004-0087 Page 9
Application No. 09/677,705
means disclosed in the present application.1 Therefore the examiner's proposed
modification to Mullis based on the teachings of Singerman would not arrive at the
claimed invention as set forth in independent claims 1 and 33.
With respect to independent claim 12, Mullis does not teach or suggest either
(1) providing at least one totally reflective mirror and a plurality of partially reflective
mirrors; or (2) attaching one of the partially reflective mirrors to the easily separable
cover. In our view, the combined teachings of the applied prior art would not have
made it obvious at the time the invention was made to a person of ordinary skill in the
art to have attached Mullis' partially reflective mirror to an easily separable cover.
Therefore the examiner's proposed modification to Mullis based on the teachings of
1 While there is no litmus test for an "equivalent" that can be applied with absolute certainty and
predictability, there are several indicia that are sufficient to support a conclusion that one element is or is
not an "equivalent" of a different element in the context of 35 U.S.C. § 112, sixth paragraph. Among the
indicia that will support a conclusion that one element is or is not an equivalent of another are: (A)
Whether the prior art element(s) performs the function specified in the claim in substantially the same
way, and produces substantially the same results as the corresponding element(s) disclosed in the
specification. Odetics Inc. v. Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d 1225, 1229-30 (Fed.
Cir. 1999); (B) Whether a person of ordinary skill in the art would have recognized the interchangeability of
the element(s) shown in the prior art for the corresponding element(s) disclosed in the specification.
Al-Site Corp. v. VSI International Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir. 1999);
Chiuminatta Concrete Concepts, Inc. v. Cardinal Indus., Inc., 145 F.3d 1303, 1309, 46 USPQ2d 1752,
1757 (Fed. Cir. 1998); (C) Whether the prior art element(s) is a structural equivalent of the corresponding
element(s) disclosed in the specification. In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed.
Cir. 1990); (D) Whether there are insubstantial differences between the prior art element(s) and the
corresponding element(s) disclosed in the specification. IMS Technology, Inc. v. Haas Automation, Inc.,
206 F.3d 1422, 1436, 54 USPQ2d 1129, 1138-39 (Fed. Cir. 2000); Valmont Indus., Inc. v. Reinke Mfg.
Co., 983 F.2d 1039, 1043, 25 USPQ2d 1451, 1455 (Fed. Cir. 1993).
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