Ex Parte Faber

Board of Patent Appeals and Interferences

May 31, 2005

09883357 (B.P.A.I. May. 31, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte LOTHAR K. FABER
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Appeal No. 2005-1201
Application No. 09/883,357
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ON BRIEF
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Before HAIRSTON, JERRY SMITH, and NAPPI, Administrative Patent Judges.
HAIRSTON, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 7 through 9 and 20.
The disclosed invention relates to a microscope for viewing samples
stereoscopically or compoundly aided by either brightfield or fluorescent illumination.
Claim 1 is the only independent claim on appeal, and it reads as follows:
1. A microscope for viewing samples stereoscopically or compoundly, said
microscope comprising:
a stereo objective;
a compound objective;
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Application No. 09/883,357
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an objective housing, said objective housing holding said stereo objective and said
compound objective, said objective housing enabled to swap said stereo objective with
said compound objective or said compound objective with said stereo objective in a
viewing path of the microscope;
a microscope body;
a light for providing brightfield illumination for use with both said stereo and
compound objectives; and
a light for providing fluorescent illumination for use with both said stereo and
compound objectives.
The references relied on by the examiner are:
Fehr et al. (Fehr) 4,697,893 Oct. 6, 1987
Koyama et al. (Koyama) 6,226,118 May 1, 2001
(filed June 16, 1998)
Claims 1, 7 through 9 and 20 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Fehr in view of Koyama.
Reference is made to the briefs and the answer for the respective positions of the
appellant and the examiner.
OPINION
We have carefully considered the entire record before us, and we will reverse the
obviousness rejection of claims 1, 7 through 9 and 20.
We agree with the examiner’s findings (answer, page 3) concerning the microscope
objective lens teachings of Fehr. Appellant has not challenged the examiner’s finding that
Fehr discloses a stereoscopic objective lens system 8 and a binocular lens system 9
mounted on a slide 11 that slides each of the two lens systems into and out of the viewing
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Application No. 09/883,357
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path of the microscope. The examiner acknowledges (answer, page 3) that Fehr does not
disclose that “the microscope has an illumination system [that] comprises a light
transmitted system and a fluorescent system.” Turning to Koyama, the examiner states
(answer, pages 3 and 4) that “in the embodiment described in column 14 and shown in
figure 12, Koyama et al disclose a microscope having an illumination system [that]
comprises 1) a light transmitting illumination (63) for providing a bright illuminating pattern
to an object, and a fluorescent illumination system (56) for providing excited light to
activate fluorescent illumination in the object, and 2) a mechanism (8) supporting different
objective lens systems in which a particular objective lens system is selectably inserted
into the viewing path of the microscope.” These findings by the examiner have not been
challenged by the appellant.
The examiner is of the opinion (answer, page 4) that “it would have been obvious to
one skilled in the art at the time the invention was made to modify the microscope having
an objective lens changer provided by Fehr et al by using an illumination system having
both a light transmitted illumination system and a fluorescent illumination system, and a
motorized mechanism as suggested by Koyama et al for the purpose of automation [of] the
switching of the different objective lens systems in either a bright illumination or a
fluorescent illumination.”
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Application No. 09/883,357
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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.
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.
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Application No. 09/883,357
Page 5
In summary, the rejection of record is reversed for lack of a prima facie case of
obviousness.
DECISION
The decision of the examiner rejecting claims 1, 7 through 9 and 20 under 35
U.S.C. § 103(a) is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JERRY SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
ROBERT E. NAPPI )
Administrative Patent Judge )
KWH/lp
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Application No. 09/883,357
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