Appeal No. 1996-3578 Page 7
Application No. 08/125,756
Examiner is merely arguing that the system of DiPietro is “capable” of performing the
claimed functions, and that the Examiner has failed to provide motivation to modify the
reference to perform the claimed functions. (See reply brief at page 6.) We agree with
appellants. “The question is . . . whether it [the modification] would have been obvious from
a fair reading of the prior art reference as a whole . . . The mere fact that the prior art could
be so modified would not have made the modification obvious unless the prior art
suggested the desirability of the modification. “ In re Gordon, 733 F.2d 900, 902, 221
USPQ 1125, 1127 (Fed. Cir. 1984). We agree with appellants that the Examiner has not
set forth an adequate line of reasoning concerning the motivation to modify the teachings
of DiPietro. Therefore, we will not sustain the rejection of claim 18.
Therefore, we will not sustain the obviousness rejection of claims 17, 18 and their
dependent claims 19-24. Claims 25 and 26 contain the corresponding claim limitations
concerning the scan speed and scan scope, therefore we will not sustain the obviousness
rejection of claims 25 and 26.
CONCLUSION
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