Appeal 2007-2680
Application 10/756,352
mask and the optical element (i.e., the mask is not adhered to the surface of
the optical element as is done in Daniels’ method) are disadvantageous
because “the marking will not be sharply defined at the edges thereof” (i.e.,
some of the peripheral coating will travel through the gap between the mask
and the optical element and deposit on the clear aperture of the optical
element) (Daniels, col. 1, ll. 64-68).
From Kato’s and Daniels’ disclosures, it is evident that both are in the
same field of endeavor as Appellant’s claimed invention. Kato and Daniels
are directed to forming coatings on optical elements, which is the same as
Appellant’s field of endeavor. Moreover, it is clear from Kato’s and
Daniels’ disclosures that both are reasonably pertinent to the problem to be
solved by Appellant (i.e., providing an optical element with a coating with
sharp borders and a clear aperture). Accordingly, Appellant’s non-
analogous art arguments are not persuasive.
Regarding Appellant’s impermissible hindsight and “obvious to try”
arguments, the Examiner has provided motivation directly from the
references for combining Kato’s step of coating the periphery of an optical
element and Daniels’ method of coating to form sharply defined edges with
Bauer’s process of peripherally coating optical element (Answer 5 and 7).
In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d 1453, 1457-58 (Fed. Cir.
1998).
Furthermore, when a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one. KSR, 127 S. Ct. at 1740, 82 USPQ2d at
1396. If a person of ordinary skill can implement a predictable variation,
§ 103 likely bars its patentability. Id. For the same reason, if a technique
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