Ex parte DEGUCHI - Page 10

          Appeal No. 1998-1320                                                        
          Application No. 08/305,643                                                  

          exist.  While it is reasonable to assume that a single  7, 8                
          segment LED display would be less expensive than multiple                   
          7, 8 segment displays, as asserted by the Examiner, this fact               
          alone does not, in our view, establish that a skilled artisan               
          would have found it obvious to reconfigure the multiple digit               
          displays of either the admitted prior art or Null to provide                
          all of the claimed indicator functions in a single segmented                
          LED display.  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 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.                    
               We further agree with Appellant that the Examiner’s                    
          reliance on In re Karlson, id., is misplaced with regard to                 
          the present factual situation.  Contrary to the facts                       
          presented in Karlson in which certain elements and their                    
          functions are removed and the retained elements perform the                 
          same functions as before, the                                               


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