Ex Parte ORLOFSKY - Page 10




            Appeal No. 2000-0377                                                                         
            Application 08/777,841                                                                       

                  While it is true that the references need not expressly                                
            state the motivation, the motivation must come from somewhere in                             
            the evidence of record, such as the knowledge of one of ordinary                             
            skill in the art or in the nature of the problem to be solved.                               
            It is not persuasive to just make up a rationale that might fit                              
            the circumstances, as the Examiner appears to have done, because                             
            the lack of factual support smacks of hindsight.  In any case,                               
            however, we find that the combination does not meet all of the                               
            limitations of claims 1 and 4.                                                               

            Claim 6                                                                                      
                  The Examiner finds that the combination of Hotka and Yamada                            
            meets the limitations of claim 6 except for providing a visual                               
            representation of positions of mechanical toggle switches and                                
            rotary switches (FR4; EA5).  The Examiner finds that the APA of                              
            Appellant's figure 2 shows visual representation of positions of                             
            mechanical toggle switches and rotary switches as prior art (FR4;                            
            EA5).  The Examiner concludes that it would have been obvious to                             
            add the visual representation of mechanical toggle switches and                              
            rotary switches, as taught by the APA, to the combination of                                 
            Hotka and Yamada "because it would result in ease of operation                               
            and realistic view of system" (emphasis omitted) (FR4) and                                   
            "because it would help a user, from his/her workstation, to                                  



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