Appeal No. 2001-1764 Page 6
Application No. 08/784,670
Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter is obvious. The question of obviousness is “based on
underlying factual determinations including . . . what th[e] prior art teaches explicitly and
inherently. . . .” In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697(Fed. Cir.
2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ 1614, 1616 (Fed. Cir. 1999); In
re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed. Cir. 1995)). "’A prima facie
case of obviousness is established when the teachings from the prior art itself would
appear to have suggested the claimed subject matter to a person of ordinary skill in the
art.’" In re Bell, 991 F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993) (quoting In
re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
Here, we find that Reed arranges menu items, viz., “command items most
likely to be utilized by a user,” abs., ll. 2-4, based on heuristics including “frequency of
command use, recency of command use, ” id. at ll. 7-10, and “the time of day. . . .”
Col. 5, l. 29. The primary reference explains that its “heuristics may be implemented
either separately or together in the system.” Abs., ll. 10-12 (emphasis added). As one
example of implementing heuristics together, Reed discloses that the “frequency
heuristic could also be made dependent on the time of day [heuristic] . . . .” Col. 5,
ll. 28-29. Although the appellant belittles "the Reed authors' commentary [a]s no more
Page: Previous 1 2 3 4 5 6 7 8 9 10 Next
Last modified: November 3, 2007