Appeal No. 2006-2172
Application No. 10/685,270
and/or evidence. Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785,
788 (Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA
1976).
With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of appealed independent
claims 1, 6, and 8 based on the combination of Dragone and Xiang, Appellants assert (Brief,
pages 5-9; Reply Brief, pages 2-5) that the Examiner has failed to set forth a prima facie case
of obviousness since proper motivation for the proposed combination of references has not
been established. After reviewing the arguments of record from Appellants and the
Examiner, we are in general agreement with Appellants’ position as stated in the Briefs.
The Examiner proposes (Answer, pages 3 and 4) to modify the device of Dragone by
substituting the diffraction grating concentric spectrometer structure taught by Xiang for the
diffraction grating spectrometer structure disclosed by Dragone. In our view, however, the
system described by Xiang has little relevance to the optical data transmission system of
Dragone and, at best, provides only a disclosure that concentric spectrometers may be known
in the art. The mere fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-
84 (Fed. Cir. 1992).
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