Appeal No. 1996-3750
Application No. 08/321,058
it would have been obvious “to include a right side margin as
well since the paper documents that these computer related
inventions emulate were known to have both right and left
margins” [answer-page 9]. The examiner also states, at page
12 of the answer, that “annotations within the left or right
margins would be equivalent, and the aspect of alternating
between margins merely provides enhanced readability.” It is
clear, once again, that the examiner’s conclusions can only be
based on impermissible hindsight gleaned from a reading of
appellant’s own disclosure since there is not one scintilla of
evidence within any of the applied references that would
support a finding of obviousness of the instant claimed
subject matter. None of the references suggests, in any way,
that a plurality of annotations should be located “in
alternating right and left side margins on sequential pages.”
While it may be an easy thing to do once the artisan is told
what to do, as by appellant’s disclosure, there is no
suggestion by the prior art of record for providing
annotations in such an alternating fashion. We will not
sustain the rejection of claims 12 and 24 under 35 U.S.C. §
103 based on the evidence provided by the examiner.
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