Ex Parte Kuzuta

Board of Patent Appeals and Interferences

Feb 21, 2002

08919795 (B.P.A.I. Feb. 21, 2002)

The opinion in support of the decision being entered today was
not written for publication and is not precedent of the Board.

Paper No. 16

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NOBUYUKI KUZUTA

____________

Appeal No. 2000-0737
Application No. 08/919,795
____________

ON BRIEF
____________

Before URYNOWICZ, JERRY SMITH and DIXON, Administrative Patent
Judges.

URYNOWICZ, Administrative Patent Judge.

Decision on Appeal
This appeal is from the final rejection of claims 1-4.
The invention pertains to laser apparatus. Claim 1 is
illustrative and reads as follows:
1. A solid state laser device comprising:
a laser semiconductor for oscillating a light as a
pumping light,
a collimator lens for leading the laser light to
parallel rays,
Appeal No. 2000-0737
Application No. 08/919,795

2
a focusing lens for the laser light led to the
parallel rays by the collimator lens and leading the
focused laser light to a laser medium,
the laser medium for absorbing the laser light and
outputting a spontaneous emission light, and
an optical resonator for confining the spontaneous
emission light to make the laser light oscillated by an
induced emissions,
wherein the solid state laser device includes a first
housing for storing the laser semiconductor and the
collimator lens in a state of positioning them on the same
optical axis, and a second housing for storing the focusing
lens, the laser medium and the optical resonator in a state
of positioning them on the same optical axis, and the
housings are detachable.

The reference relied upon by the examiner is:
Clark et al. (Clark) 4,730,335 Mar. 08, 1988
Claims 1-4 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Clark.
The respective positions of the examiner and the appellant
with regard to the propriety of this rejection is set forth in
the examiner’s answer (Paper No. 13) and the appellant’s brief
and reply brief (Paper Nos. 12 and 14, respectively).
Appellant’s Invention
The invention is described at pages 2 and 3 of the brief.
Opinion
After consideration of the positions and arguments
presented by both the examiner and the appellant, we have
concluded that the rejection should not be sustained.
Appeal No. 2000-0737
Application No. 08/919,795

3
The burden initially is on the examiner to show a prima
facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992). Here, it is considered
that the examiner has not carried that burden. More
specifically, with respect to Figure 4 of Clark, it is
considered that the examiner has not provided a motivation or
suggestion as to why one of ordinary skill in the art would have
modified Clark by substituting two lenses, a collimating lens in
fitting 27 and a focusing lens in fitting 28, for the lens 22 in
fitting 27. The examiner’s observation that the two proposed
lenses are equivalent to and would perform the same function as
Clark’s lens 22 is not controlling because that fact, by itself,
is not motivation to make the change suggested by the examiner.
In fact, no motivation for making the suggested changes in Clark
has been given in the answer.
Even if one were to substitute the equivalent pair of
lenses suggested by the examiner into Clark for lens 22, both
lenses would have been positioned in fitting 27, because that is
wherein lens 22 is located. No motivation has been given for
placing a collimating lens in fitting 27 and a focusing lens in
fitting 28.
The fact that Clark may have been modified in the manner
suggested by the examiner does not make the modification obvious
Appeal No. 2000-0737
Application No. 08/919,795

4
unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992).

REVERSED

STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
)BOARD OF PATENT
) APPEALS AND
JERRY SMITH ) INTERFERENCES
Administrative Patent Judge )
)
)
)
)
JOSEPH L. DIXON )
Administrative Patent Judge )

SLD
Appeal No. 2000-0737
Application No. 08/919,795

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