Appeal No. 2005-0825
Application 08/772,259
dispositive. The test for obviousness is whether the references
would have suggested doing what appellants have done. In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981). Thus,
the absence of express suggestion or motivation in the applied
prior art is not alone determinative. The prior art need not
suggest solving the same problem set forth by appellants. In re
Dillon, 919 F.2d 688, 692-693, 16 USPQ2d 1897, 1901 (Fed. Cir.
1990) (en banc) (overruling in part In re Wright, 848 F.2d 1216,
1220, 6 USPQ2d 1959, 1962 (Fed. Cir. 1988)), cert. denied, 500
U.S. 904 (1991). As noted above, we find sufficient motivation
on this record to combine the teachings of the admitted prior art
and Ishikawa so that the diffusion plate of the admitted prior
art can be removed and its function assumed by the roughened
slopes of the prismatic surface as taught by Ishikawa.
In summary, we are not persuaded by appellants’ arguments
that the examiner’s rejection is in error. Therefore, the
decision of the examiner rejecting claims 4-7 and 9-11 is
affirmed.
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