Appeal No. 94-1490
Application 08/135,833
position at a time. However, even assuming a Space Bar key
causes backward cursor movement, we agree with appellant that the
examiner's proposed combination of teachings is improperly based
on hindsight. As explained in In re Napier, 55 F.3d 610, 613,
34 USPQ2d 1782, 1784 (Fed. Cir. 1995),
"[o]bviousness cannot be established by combining the
teachings of the prior art to produce the claimed
invention, absent some teaching, suggestion or
incentive supporting the combination." In re Bond,
910 F.2d 831, 834, 15 USPQ2d 1566, 1568 (Fed. Cir.
1990) (quoting Carella v. Starlight Archery and Pro
Line Co., 804 F.2d 135, 140, 231 USPQ 644, 647 (Fed.
Cir. 1986)). However, the "suggestion to modify the
art to produce the claimed invention need not be
expressly stated in one or all the references used to
show obviousness." Cable Elec. Prods., Inc. v.
Genmark, Inc., 770 F.2d 1015, 1025, 226 USPQ 881, 886
(Fed. Cir. 1985). Rather, the test is whether the
combined teachings of the prior art, taken as a whole,
would have rendered the claimed invention obvious to
one of ordinary skill in the art. See In re Gorman,
933 F.2d 982, 986, 18 USPQ2d 1885, 1888 (Fed. Cir.
1991).
The examiner has not explained, and it is not apparent to us, why
the artisan, absent the guidance provided by appellant's
disclosure and claims, would have been motivated to combine the
functions of the prior art Undo, Delete, End, and Space Bar keys
into one key in a manner that satisfies the requirements of
claims 1 and 7. More particularly, the examiner has not
explained why the artisan would have been motivated to make the
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