Appeal No. 1996-4148
Application No. 08/327,085
fulfill the rotation function more effectively."
In the answer, the Examiner argues that the lack of
disclosure of the carrousel format of display by Kreitman et
al. is not indicative of its nonobviousness. In the answer5,
the Examiner argues that the rotation and visibility of
information pages of a carrousel are the key features of the
present invention, and that rotation and visibility are
disclosed by Kreitman et al. Lastly, in the answer the
Examiner asserts
". . . the basic issue is whether fanciful or arbitrary
"looks" of an otherwise functionally equivalent icon renders
the claim patentable. It is the position of the examiner that
such is a matter of design choice."
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
5 At page 6.
8
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