Appeal No. 1998-1472 Page 22
Application No. 08/427,721
311, 312-13 (Fed. Cir. 1983)). “‘[T]he question is whether
there is something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the
combination.’” In re Beattie, 974 F.2d 1309, 1311-12, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting Lindemann
Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d
1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984)). “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.”
Fritch, 972 F.2d at 1266, 23 USPQ2d at 1784 (citing Gorman,
933 F.2d at 987, 18 USPQ2d at 1888).
Here, the examiner fails to identify a sufficient
suggestion to combine Takeda with Bjorklund. To the contrary,
figures 1a and 1b of Bjorklund show that beams #1, #2, and #3
of the reference are each focussed by a respective lens. If
the lens for beam #2 was removed, the beam would be out-of-
focus. Being out-of-focus, it would not interact properly
with beam #1, which would still be in-focus, to record a
micro-interface pattern. See Bjorklund, col. 1, ll. 63-64.
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