Appeal No. 2003-1832 Page 7
Application No. 09/222,230
case, we fail to perceive any teaching, suggestion or incentive in the applied references
which would have led one of ordinary skill in the art to provide the modified Taniguchi
image generator with an analyzer positioned in accordance with claims 1 and 32. It
would appear that the only suggestion for combining the teachings of the references in
the manner proposed by the examiner resides in the luxury of the hindsight afforded
one who first viewed the appellants’ disclosure, which is not a proper basis for a
rejection. In re Fritch, 972 F.2d 1260, 1264, 23 USPQ2d 1780, 1784 (Fed. Cir. 1992).
It therefore is our conclusion that the combined teachings of Taniguchi, Cobb and
Handschy fail to establish a prima facie case of obviousness with regard to the subject
matter recited in independent claims 1 and 32, and we will not sustain the rejections of
these claims or, it follows, of claims 2, 5, 7-12, 14, 15, 17-20, 22-24, 26, 29-31, 34-36
and 41-44, which depend therefrom.
The addition of Miyazawa to the three basic references in the rejection of
dependent claims 3, 16 and 25, of Carroll for the rejection of dependent claim 27, and of
Miyazawa and Carroll in the rejection of dependent claims 6 and 28, fails to overcome
the deficiency discussed above with regard to the analyzer recited in independent
claims 1 and 32. This being the case, the rejections of these dependent claims also are
not sustained.
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