Appeal No. 1997-2293
Application No. 08/089,311
as to what structure of Johnston or Koshiyouji could be
construed to correspond to the claimed light box structure and
we find no enlightenment on this issue from the Examiner’s
reasoning in the Answers.
Further, it is our view that, notwithstanding the merits
of the Examiner’s generalized assertion (Answer, page 5) that
vertically mounted light boxes for viewing x-rays are well
known in the art, such assertion does not address the issue of
obviousness with respect to the specific limitations of the
appealed claims. As discussed supra, we find no disclosure of
any light box structure in Johnston or Koshiyouji. The
Examiner has provided no indication as to how and where the
skilled artisan might have found it obvious to modify either
of Johnston or Koshiyouji to arrive at the particular light
box and scanner arrangement of the claimed invention. 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 n.14, 23
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992). Since all of the
claim limitations are not taught or suggested by the applied
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