Ex parte HANAOKA et al. - Page 15




          Appeal No. 96-3561                                                          
          Application No. 08/045,241                                                  


               We fail to see anything which would have led the artisan               
          to make the combination sought by the examiner.  As appellants              
          point out [brief-page 5], Shirai’s composing circuit composes               
          an image by combining background image data with character                  
          data.  While we do find that Hayden’s graphic data (relating                
          to the telephone) does represent an appearance of an                        
          information processing device (the actual telephone), the icon              
          in Hayden is not formed by composing divided graphic data and               
          the image of Shirai is not formed from divided graphic data,                
          or from character information and graphic information, as                   
          recited in instant claim 8.  Therefore, it is not clear why                 
          the skilled artisan would have combined the teachings of                    
          Hayden and Shirai in order to form a composite image in Hayden              
          comprising character information from a second memory and                   
          graphic data of a first memory.  It is especially unclear what              
          would have led the artisan to make such a modification in                   
          Hayden when Hayden is not concerned with composing an image                 
          from divided graphic data.                                                  
               Accordingly, we will not sustain the rejection of                      
          independent claim 8, nor the rejection of claims 9 and 10                   
          which depend therefrom, under 35 U.S.C. 103.                                
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