Ex parte RUSSELL et al. - Page 7




                     Appeal No. 1998-3385                                                                                                                                              
                     Application No. 08/601,551                                                                                                                                        



                     1239 (Fed. Cir. 1995), cert. denied, 117 S. Ct. 80 (1996)                                                                                                         
                     citing W. L. Gore & Assocs., Inc., v. Garlock, Inc., 721 F.2d                                                                                                     
                     1540, 1548, 220 USPQ 303, 309 (Fed.Cir. 1983), cert. denied,                                                                                                      
                     469 U.S. 851 (1984).                                                                                                                                              


                                The Examiner points to reasons for combining features                                                                                                  
                     from Woolsey and Lisle in the body of the rejection.  However,                                                                                                    
                     no reasons are provided therein for combining features of                                                                                                         
                     Vu/Post into Borovoy or for combining features from Woolsey or                                                                                                    
                     Lisle into Borovoy or Vu/Post.   In addition, the Examiner       2                                                                                                
                     argues that the skilled artisan would have been motivated to                                                                                                      
                     combine the teachings of the cited references as "Borovoy                                                                                                         
                     provides explicit teachings for annotating a 3-D model, that                                                                                                      
                     Vu/Post and Woolsey provides [sic] explicit teachings for                                                                                                         
                     logically and visually anchoring annotations with [a] 2-D                                                                                                         
                     pointer in a 2-D image and that Lisle merely teaches that 3-D                                                                                                     
                     pointers were known in that art."3                                                                                                                                



                                2 See page 6 of the answer.                                                                                                                            
                                3 See page 8 of the answer.                                                                                                                            
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