Appeal No. 2004-0288
Application No. 09/173,747
not only identify the elements in the prior art, but also show
“some objective teaching in the prior art or that knowledge
generally available to one of ordinary skill in the art would
lead the individual to combine the relevant teachings of the
references.” In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). Such evidence is required in order to
establish a prima facie case. In re Piasecki, 745 F.2d 1468,
1471-72, 223 USPQ 785, 787-88 (Fed. Cir. 1984).
Appellants argue that neither Knight, nor McDaniel contains
any teaching or suggestion relevant to the diameter of the
incident light being greater than the center hole diameter and
the diameter of passing light being equal to said center hole
diameter, as recited in claim 37 (brief, pages 25 & 26).
Additionally, Appellants point out that although Figures 2 and 4
of Lee show the lens and coil configuration, Lee fails to teach
or suggest the relationship between the center hole diameter and
the diameter of the incident light and the passing light (brief,
page 26).
The Examiner responds to Appellants’ arguments by stating
that McDaniel discloses the dimensions of the yoke and coil while
Lee teaches the diameter range of the beam (answer, page 10).
The portions of McDaniel (col. 11, lines 15-31) and Lee (col. 6,
lines 10-16) relied on by the Examiner disclose the innermost
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