Appeal No. 1997-1199
Application No. 08/309,366
USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re
Gordon, 773 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). “Obviousness may not
be established using hindsight or in view of the teachings or
suggestions of the inventor.” Para-Ordnance Mfg., Inc. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ 2d 1237,
1239 (Fed. Cir. 1995), citing W. L. Gore & Assocs., v.
Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13
(Fed. Cir. 1983).
We apply the above guidelines to the instant case. We
take the independent claim 1 as an example.
We have reviewed Appellants’ arguments (brief, pages 5 to
8) and the Examiner’s position (answer, pages 3 to 13)
regarding claim 1. At the outset, we point out that the
claimed step of “displaying icons representing the sets of
attributes in said template types pane” should precede the
claimed step of “selecting one set from the sets of attributes
for display” because the former is necessary for the latter.
A similar problem is found in claim 14. However, this issue
is not before us and we leave it to the Examiner to further
examine it as deemed appropriate.
7
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