Appeal No. 2006-0741
Reexamination Control No. 90/006,185
Obviousness is a question of law based on findings of underlying facts relating to the
prior art, the skill of the artisan, and objective considerations. See Graham v. John Deere Co.,
383 U.S. 1, 17, 148 USPQ 459, 467 (1966). To establish a prima facie case of obviousness
based on a combination of the content of multiple references, there must be a teaching,
suggestion, or motivation in the prior art to make the specific combination that was made by the
applicant. In re Raynes, 7 F.3d 1037, 1039, 28 USPQ2d 1630, 1631 (Fed. Cir. 1993); In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1445 (Fed. Cir. 1992). As discussed in
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985),
it is the prior art itself, and not the applicant's disclosure, that must establish the obviousness of
the combination.
The examiner has not articulated any reasonable teaching, suggestion, or
motivation for one with ordinary skill in the art, in light of the Moharam reference, to
apply in Raymond source illumination including a range of wavelengths and then
measuring the diffracted or reflected illumination as a function of wavelength. The
rigorous diffraction model and the statistical prediction algorithm used in Raymond are
based on varying the incident angle with a fixed wavelength and not the inverse, i.e.,
multiple wavelength of incident illumination and a fixed incident angle. Also, Moharam
does not disclose the application of incident illumination with multiple wavelengths and
measuring the resulting diffraction as a function of wavelength in any particular
application except for determining the sensitivity of diffraction to wavelength, and even
then, it would be for a fixed incident angle of illumination. Based on the disclosure of
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