Appeal No. 1998-0643
Application 08/196,028
We find no motivation for the proposed modification
either in the references or in the knowledge of one of
ordinary skill in the art. There is no suggestion in
Bloomberg or Tanaka to bound word objects. "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, 23 USPQ2d 1780, 1783-84
(Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). The merged characters
in figure 14B of Bloomberg are only part of a series of steps
to determine a highlighted region and there is no suggestion
that the intermediate data of figure 14B should be used to
determine word objects. There is no suggestion in Tanaka that
the method could be applied to determining the boundaries of a
word object. It is clear that the Examiner has used hindsight
to motivate the combination. We conclude that the Examiner
has failed to establish a prima facie case of obviousness.
The rejection of claims 1 and 12 is reversed.
Claims 2-5, 8-11, 19, 21, 22, 29, and 30
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