Appeal No. 97-1163
Application 08/200,044
book, would be needed, as well as an explanation why one would
apply that knowledge to two series connected lasers or cooling
apparatuses.
Furthermore, it should be noted that 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, 23 USPQ2d 1780, 1783-84 (Fed.
Cir. 1992). It is impermissible to use the claimed invention
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 at 1266, 23 USPQ2d
at 1784.
For the foregoing reasons, we do not sustain the
obviousness rejection of the claims on appeal over Albanese.
Conclusion
The rejection of claims 1, 3-7 and 9-14 under 35 U.S.C.
§ 112, first and second paragraphs, is reversed.
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007