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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