Appeal No. 2003-1832 Page 4
Application No. 09/222,230
zero. As explained on pages 20 and 21 of the specification, with reference to the
embodiment of the invention shown in Figure 10a, the analyzer “may be a film attached
to the side of the beamsplitter [505] next to the viewing lens [531],” whereupon the
beamsplitter and the analyzer pass light having a polarization opposite to the light from
the light source which is reflected toward the display. The appellants state on page 10
of the Brief that in the prior art auxiliary analyzers were positioned between the
beamsplitter and the lens, normal to the incident reflected light, to “clean up” unwanted
polarization that was leaked by the beamsplitter, but that this arrangement gave rise to
problems. According to the appellants, attaching the analyzer to the beamsplitter and
orienting it so that it makes a substantial angle with the incident light solves the
problems present in the prior art arrangements.
The examiner has rejected the two independent claims as being obvious1 in view
of the combined teachings of Taniguchi, Cobb and Handschy. In arriving at this
conclusion, the examiner initially has found all of the subject matter recited in claims 1
and 32 to be disclosed or taught by Taniguchi, except for the requirements that (1) the
1The test for obviousness is what the combined teachings of the prior art would have suggested to
one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness, it is incumbent upon the examiner to
provide a reason why one of ordinary skill in the art would have been led to modify a prior art reference or
to combine reference teachings to arrive at the claimed invention. See Ex parte Clapp, 227 USPQ 972,
973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation must stem from some teaching,
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
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