Ex parte BANERJEE et al. - Page 15

          Appeal No. 1998-0943                                                        
          Application No. 08/300,500                                                  

               Further, we are cognizant of the Examiner’s assertion                  
          (Answer, page 5) as to the conventionality of using                         
          handwriting input and recognition techniques as display user                
          interface features.  Notwithstanding the merits of this                     
          contention, however, we find no convincing reasoning supplied               
          by the Examiner as to how and why the skilled artisan would                 
          apply such handwriting recognition features to the system                   
          described in McCain.  The 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 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).  We are                
          left to speculate why the skilled artisan would modify the                  
          touch screen input subsystem of McCain with the handwriting                 
          recognition teachings of More.  The only reason we can discern              
          is improper hindsight reconstruction of Appellant’s claimed                 
          invention.  Accordingly, the Examiner’s  35 U.S.C.  103                    
          rejection of dependent claims 4 and 12 is not sustained.                    
               Further, we find the Examiner’s line of reasoning to be                
          similarly deficient with respect to the power conservation                  
          features of claim 13 and, therefore, we also do not sustain                 

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