Ex parte ANDERSON et al. - Page 11

              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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