Appeal No. 2005-1201 4
Application No. 09/883,357
Appellant argues (brief, page 9) that the applied references neither teach nor would
have suggested to one of ordinary skill in the art to use a combination of light systems with
different objective lenses as set forth in claim 1 on appeal.
We agree with appellant’s argument. As indicated supra, Fehr discloses the
objective lenses set forth in claim 1 on appeal, but is silent as to any light sources used
with the lenses. Koyama uses the light sources set forth in claim 1 on appeal, but the
lenses used with the light sources are merely an ordinary objective lens and a low-
magnification objective lens (column 7, lines 33 through 36; column 13, line 59 through
column 14, line 44). Other than an automation rationale for presumably the manual slider
11 in Fehr, the examiner has not provided any reasoning for modifying the microscope
disclosed by Fehr with the microscope teachings of Koyama.
The examiner has the initial burden of establishing a prima facie case of
obviousness. If that burden is met, the burden of coming forward with evidence or
argument shifts to the appellant. In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443,
1444 (Fed. Cir. 1992). We find that the examiner has not set forth an initial showing that
would have demonstrated the obviousness of the claimed subject matter. Thus, the
burden of coming forward with evidence1 never shifted to the appellant.
1 In view of the lack of a prima facie case of obviousness, the evidence in the declaration of record
will not be addressed by the Board.
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007