Appeal No. 1999-2413
Application No. 08/754,203
and 44 discussed supra, we reach the opposite conclusion with
respect to claim 42. As the basis for the obviousness rejection of
claim 42, the Examiner relies on Eino alone. In the Examiner’s
analysis (Answer, page 6), it is asserted that Eino, which
explicitly discloses a single display unit for displaying a
transformed image input from an endoscope, discloses the claimed
invention except for the use of separate first and second display
units for displaying raw and transformed images produced from an
image input unit. Nevertheless, the Examiner suggests the
obviousness to the skilled artisan of providing a separate display
unit to enable a surgeon, for example, operating on a particular
patient in a different orientation from a particular endoscope
direction to see a correctly oriented display image.
After careful review of the Eino disclosure, we are in
agreement with Appellants (Brief, page 11) that the Examiner has
failed to establish a prima facie case of obviousness. We find no
evidence provided by the Examiner that would support the
obviousness to the skilled artisan of making the modification
suggested by the Examiner. 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,
10
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