Ex parte PODWALNY et al. - Page 5

          Appeal No. 95-3338                                                           
          Application 07/994,035                                                       

          v. Dennison Mfg. Co., 774 F.2 1082, 1092, 227 USPQ 337, 343 (Fed.            
          Cir. 1985), vacated, 475 U.S. 809, 229 USPQ 478 (1986), aff'd. on            
          remand, 810 F.2d 1561, 1 USPQ2d 1593 (Fed. Cir. 1987).  It should            
          be recognized that the fact that the prior art could be modified             
          so as to result in the combination defined by the claims at bar              
          would not have made the modification obvious unless the prior art            
          suggests the desirability of the modification.  In re Deminski,              
          796 F.2d 436, 442, 230 USPQ 313, 315 (Fed. Cir. 1986).                       
                    No rationale has been presented as to why the artisan              
          would have been led by the references to include a cover having a            
          window for permitting a portion of the computer screen to be                 
          viewed with the cover in a closed position.  As such, the                    
          examiner has failed to establish a case of prima facie                       
          obviousness necessary to support a rejection under 35 U.S.C. 103.            
                    More particularly, with regard to the rejection of all             
          claims relying on Derocher, alone, the examiner recognizes that              
          the reference lacks a teaching of the "window" feature claimed.              
          The examiner then relies on this feature to have been "old and               
          well known," citing "cassette player, CD player" and concluding              
          that it would have been obvious to apply this "window" feature in            
          Derocher [answer, page 4].                                                   


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