Appeal No. 96-3564
Application 08/274,133
citing W. L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ
303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
The Federal Circuit states that "[t]he 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
n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). We note that none of the references
address the problem that is being solved by the Appellants' invention, which is the
reduction of operator eye fatigue from concurrently displayed material which includes
highlighted text. The Examiner has shown portions of the claimed invention in the
teachings of the Pleva reference and the admitted prior art, but has not provided a
motivation why it would have been obvious to one of ordinary skill in the art at the time of
the invention to combine the teachings to achieve the invention as set forth in the language
of independent claim 26 and claims 10, 17, 30 and 33.
Instead, it appears to us that the Examiner relied on hindsight in reaching the
obviousness determination. However, our reviewing court has said, "[t]o imbue one of
ordinary skill in the art with knowledge of the invention in suit, when no prior art reference or
references of record convey or suggest that knowledge, is to fall victim to the insidious
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