Appeal 2007-0203
Application 10/139,969
determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966). If that burden is met, the burden then shifts to the
Appellants to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole and
the relative persuasiveness of the arguments. See In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Regarding independent claims 22-24, the Examiner's rejection
essentially finds that Presby teaches every claimed feature except for (1)
using lenses instead of mirrors as disclosed in Presby, and (2) moving the
secondary lens instead of the primary lens as in Presby. The Examiner,
however, notes that Presby teaches using lenses in lieu of mirrors in ¶ 0028
of the reference. The Examiner also notes that deforming any mirror/lens,
not necessarily the primary mirror/lens, achieves the same result and would
have been apparent to one of ordinary skill in the art. The Examiner then
concludes that it would have been obvious to one of ordinary skill in the art
at the time of the invention to use lenses instead of mirrors and deform the
secondary lens instead of the primary lens in Presby to utilize functionally
equivalent optical elements for specific applications or environments
(Answer 2-6).
Appellants argue that the movable lens element of the claimed
invention is not the functional equivalent of Presby’s deformable mirror.
Although Appellants concede that substituting a fixed, non-deformable
secondary lens for the fixed secondary mirror of Presby would constitute a
case where lenses could be used as the functional equivalent of mirrors as
Presby teaches, Appellants emphasize that a movable lens element as
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