Appeal No. 1999-0590
Application 08/444,841
appellant’s disclosure. The thrust of appellant’s argument is
that information stored in the claimed invention is determined
by the applications program whereas information stored in
Boulton is determined by the operator [brief, pages 4-11].
The examiner responds that the claimed invention would
have been obvious to the artisan because the reviewer in
Boulton would have been interested in knowing which message
boxes were activated by the operator’s use of the application
program because it indicates some kind of problem the operator
had while running the application program [answer, pages 5-8].
We agree with the position argued by appellant. The
examiner admits that the only applied prior art reference does
not teach the storage of message boxes automatically generated
by an application program when predetermined conditions occur
during the performance of the application program. Although
the examiner has identified advantages to be obtained by
modifying the reference to have this feature, the examiner has
not identified where the applied reference suggests this
modification. 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
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