Appeal No. 2001-2525 Page 5
Application No. 09/000,579
Also, see appellants’ remarks at pages 2-4 of the reply
brief with which we generally agree. Additionally, the examiner
has not shown how the elimination of the splitter at the front
end of the process of Eisenlohr would have resulted in a parallel
process corresponding to appellants’ claimed process. With
regard to the examiner’s separate § 103 rejection of claims 4, 6,
22 and 23, the examiner has not shown how the teachings of
Vickers remedy the deficiencies in the teachings of Eisenlohr.
The mere fact that the prior art may be modified to reflect
features of the claimed invention does not make the modification
obvious unless the desirability of such modification is suggested
by the prior art. The claimed invention cannot be used as an
instruction manual or template to piece together the teachings of
the prior art so that the claimed invention is rendered obvious.
In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1784 (Fed.
Cir. 1992). Accordingly, on this record, the rejections fail for
lack of a sufficient factual basis upon which to reach a
conclusion of obviousness. In re Fine, 837 F.2d 1071, 1073-74,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988).
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