Ex parte FITZPATRICK et al. - Page 5




                Appeal No. 96-2097                                                                                                            
                Application 08/037,983                                                                                                        


                removal of the conflicting event from the electronic calendar.                                          2                     
                It has not been established that it would have been obvious to                                                                
                one of ordinary skill in the art at the time the invention was                                                                
                made to add these features to the above prior art combination.                                                                
                Motivation or suggestion in the prior art to add these features                                                               
                to the prior art relied on by the examiner has not been                                                                       
                established.  The mere fact that the prior art may be modified in                                                             
                the manner suggested by the examiner does not make the                                                                        
                modification obvious unless the prior art suggested the                                                                       
                desirability of the modification.  In re Fritch, 972 F.2d 1260,                                                               
                1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).                                                                               
                         Whereas the rejection of the only independent claims, claims                                                         
                1 and 8, over the applied prior art is reversed, the rejection of                                                             
                dependent claims 2-7 and 9-18 over that art is reversed.                                                                      
                REVERSED                                                                                                                      






                         2Although the claimed invention does not cause the removal                                                           
                of a conflicting event on the target's calendar as noted by                                                                   
                appellants, we note that a statement in the examiner's answer to                                                              
                the effect that at col. 4, lines 18-48 and at FIGS. 6A and 6B                                                                 
                McGaughey teaches removing a conflicting event on the calendar                                                                
                maintained by the target is seen to have no actual support in the                                                             
                aforementioned parts of the reference.                                                                                        
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