Appeal No. 95-3797
Application 07/975,764
While it is true that if the device disclosed in
Bentensky were modified as proposed by the examiner the
display would be located at the focal plane of eyepiece 8,
this fact, however, does not provide the proper motivation for
modifying the Betensky device as proposed. It is the
teachings of the prior art taken as a whole which must provide
the motivation or suggestion for the modification. See
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5
USPQ2d 1434, 1438 (Fed. Cir. 1988); Interconnect Planning
Corp. v. Feil 774 F.2d 1132, 1143,
227 USPQ 543, 551 (Fed. Cir. 1985); In re Deminski, 796 F.2d
436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986). Here, only the
appellant have suggested that a display be placed on a second
optical path at the focal plane of the eyepiece. As the court
in Uniroyal 837 F.2d at 1051, 5 USPQ at 1438 stated : “it is
impermissible to use the claims as a frame and the prior art
references as a mosaic to piece together a facsimile of the
claimed invention.” In view of the foregoing, we will not
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