Appeal No. 95-3744
Application 08/084,838
In rejecting claims under 35 U.S.C. § 103, it is incumbent upon the examiner to establish a
factual basis to support the legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073,
5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459,
467 (1966), and to provide a reason why one having ordinary skill in the pertinent art would have
been led to modify the prior art or to combine prior art references to arrive at the claimed
invention. Such reason must stem from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having ordinary skill in the art. Uniroyal Inc.
v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied,
488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293,
227 USPQ 657, 664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hospital
Systems, Inc. v. Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir.
1984). These showings by the examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992). We now consider how these rules apply to the claims on
appeal.
Claims 1, 4, 10 and 13 stand rejected based on Yanker in view of Steele. Yanker teaches a
display apparatus in which a large world-plane image is viewed in smaller portions through a
viewport 40. A cursor within viewport 40 can be dragged outside the viewport, and the viewport
image will pan in the direction of the nearest border. The distance at which the cursor is moved
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