Ex parte RUSSELL et al. - Page 9




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



          would have reasonably expected to use the solution that is                  
          claimed by Appellants.  However, "[o]bviousness may not be                  
          established using hindsight or in view of the teachings or                  
          suggestions of the invention."  Para-Ordnance, 73 F.3d at                   
          1087, 37 USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v.               
          Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-                
          13.                                                                         
          In addition, our reviewing court requires the Patent and                    
          Trademark Office to make specific findings on a suggestion to               
          combine prior art references.  In re Dembiczak, 175 F.3d 994,               
          1000-01, 50 USPQ2d 1614, 1617-19 (Fed. Cir. 1999).                          


               In the instant application, the person of ordinary skill               
          in the art would not have reasonably been expected to look to               
          the on-screen note cards of Vu/Post as a means for providing a              
          pointer or visual indicator in a system as disclosed by                     
          Borovoy for displaying a computer model.  Nor would he have                 
          looked to a system for retrieval of information associated                  
          with an on-screen figure as found in Woosley and a system of                
          using a three-dimensional pointer as found in Lisle to provide              

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