Appeal No. 1996-4148
Application No. 08/327,085
established using hindsight or in view of the teachings or
suggestions of the
inventor." Para-Ordnance, 73 F.3d at 1087, 37 USPQ2d at 1239,
citing W. L. Gore & Assocs., 721 F.2d at 1551, 1553, 220 USPQ
at
311, 312-13. In addition, our reviewing court requires the
PTO to make specific findings on a suggestion to combine prior
art references. In re Dembiczak, 175 F.3d 994, 1000-01, 50
USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
On page 7 of the brief Appellant addresses method claim
18 and contends that Kreitman et al. does not disclose the
claimed pages containing display images being arranged into a
three dimensional icon with one edge of the pages attached to
a common axis in the middle of the icon, and the pages being
rotated around the axis within the icon. The Examiner did not
specifically address this claim or this argument.
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
9
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