Ex parte DAILY et al. - Page 8

          Appeal No. 1998-0621                                                        
          Application No. 08/323,288                                                  

               The Examiner’s rejection states:                                       
               Therefore, it would have been obvious to one of                        
               ordinary skill in the art at the time [the]                            
               invention was made to have substituted the technique                   
               of displaying object oriented window environments                      
               surrounding the user as taught by MacKay to the                        
               technique of displaying [the] two overlapping                          
               display information of Price so as to avoid the                        
               information being blocked from view of the user.                       
               [Emphasis added.]  [Answer-pages 5 and 6.]                             
               We see nothing in the references, and the Examiner has                 
          not indicated where the references teach or suggest a desire                
          to avoid the information being blocked from view of the user.               
          We can only assume this objective was gleaned from Appellants’              
               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).  "Obviousness may                
          not be established using hindsight or in view of the teachings              
          or suggestions of the inventor."  Para-Ordnance Mfg. v. SGS                 


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