Appeal No. 1998-1388 Page 6
Application No. 08/357,678
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
If the examiner fails to establish a prima facie
case, the rejection is improper and will be
overturned. In re Fine, 837 F.2d 1071, 1074, 5
USPQ2d 1596, 1598 (Fed. Cir. 1988).
With these principles in mind, we address the appellants’
argument and the examiner’s reply.
The appellants argue, “the Goldman reference does not
disclose a specialized path. While the Kerr mechanism is an
important addition to the art, it similarly does not teach,
disclose, or suggest of a specialized path.” (Appeal Br. at
6.) The examiner’s reply follows.
Goldman teaches at col. 5, lines 51 - 55, that "an
event may occur when the cursor enters a predefined
region or when the cursor exits from a predefined
region". Goldman teaches a specialized path because
in order for an event to occur, the cursor must
cross the boundary between the predefined region and
the area outside of the predefined region. The
specialized path of Goldman involves crossing the
outside of/inside of predefined region boundary.
(Examiner’s Answer at 6.)
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