Appeal No. 1998-0160
Application No. 08/529,330
Consequently, we conclude that the applied references fail to suggest the subject
matter as a whole of Claim 16, which includes directing a beam from a laser through the
day objective lens. Moreover, the examiner has not explained why the subject matter
including that limitation is thought to be rendered obvious by the references. The mere fact
that the prior art could be modified to result in the claimed invention would not have made
the modification obvious unless the prior art suggested the desirability of the modification.
See, e.g., In re Laskowski, 871 F.2d 115, 117, 10 USPQ2d 1397, 1398 (Fed. Cir. 1989).
We do not sustain the rejection of Claims 16 through 26, since Claims 17 through
26 contain at least the limitations of independent Claim 16. We also do not sustain the
rejection of Claims 10-12, at least for the reason that the claims contain all the limitations
of independent Claim 1, and the additional applied references do not remedy the
deficiencies identified in our discussion, supra, of the rejection applied against that claim.
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