Ex Parte Nakano et al - Page 5



          Appeal No. 2003-1483                                                        
          Application No. 09/591,661                                                  
          of unquestionable demonstration, consistent with the holding in             
          set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ             
          459, 467 (1966).  Additionally, establishing that all elements of           
          a combination are known does not per se establish obviousness.              
          Smith Industries Medical Systems, Inc. v. Vital Signs, Inc., 183            
          F.3d 1347, 1356, 51 USPQ2d 1415, 1420-21 (Fed. Cir. 1999) (the              
          relevant inquiry is whether there is a reason, suggestion, or               
          motivation in the prior art that would lead one of ordinary skill           
          in the art to combine the teachings of the references).  However,           
          “the Board must not only assure that the requisite findings are             
          made, based on evidence of record, but must also explain the                
          reasoning by which the findings are deemed to support the                   
          agency’s conclusion.”  In re Lee, 277 F.3d 1338, 1344, 61 USPQ2d            
          1430, 1434 (Fed. Cir. 2002).                                                
               We note that the admitted prior art merely discloses a                 
          mirror system without tilting or decentering the tertiary mirror            
          with respect to the optical axis of the system.  Cook, on the               
          other hand, relates to an image system that enables a single                
          telescope to provide a plurality of different focal lengths for             
          generating different images at the same time (col. 1,lines 45-              
          50).  Cook further teaches that, as depicted in Figures 1 and 2,            
          a primary mirror 10, a secondary mirror 12 and at least two                 

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