Appeal No. 2000-0467
Application 08/511,645
Upon careful review of Berry, we find there is no dispute
that Berry fails to teach the aforementioned limitation of claim
26. Further, upon careful review of Owens, we find that Owens
does disclose the concept of “read-only” and the use of an option
key to provide a secondary function when performing a drag
operation. However, we fail to find anything in Owens that would
suggest the aforementioned limitation of claim 26 as the Examiner
asserts in the office action.
Therefore, upon reviewing each of Berry and Owens, supra, we
find nothing in any of the references that supports the
Examiner’s position that the combination of these references
teaches the limitations of claim 26 as previously discussed.
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). In addition, our reviewing court stated
in In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433 (Fed.
Cir. 2002), that when making an obviousness rejection based on
23
Page: Previous 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 Next
Last modified: November 3, 2007