Appeal No. 2000-2148 Page 4
Application No. 08/935,704
between related object for indicating interrelationship of the
objects to Hocker. Motivation of the combining is for providing
a distinguishable graphical indication of the objects'
relationship (Hocker's col. 3, lines 3, lines 28-29), a clear and
easy to monitor representation of the object relationship
(Mashruwala's col. 1, line 61 - col. 2, line 2)." (Examiner's
Answer at 5.) The appellants argue, "[n]o suggestion of
monitoring (whether easily or with difficulty) a ‘representation
of the object relationship’ has been found in Mashruwala et al."
(Reply Br. at 3.)
“Whether motivation to combine the references was shown [is]
a question of fact.” Winner Int’l Royalty Corp. v. Wang, 202
F.3d 1340, 1348, 53 USPQ2d 1580, 1586 (Fed. Cir. 2000)(citing In
re Dembiczak, 175 F.3d 994, 1000, 50 USPQ2d 1614, 1617 (Fed. Cir.
1999); Monarch Knitting Mach. Corp. v. Sulzer Morat GMBH, 139
F.3d 877, 881-83, 886, 45 USPQ2d 1977, 1982, 1985 (Fed. Cir.
1998)). “‘[T]he question is whether there is something in the
prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.’” In re Beattie,
974 F.2d 1309, 1311-12, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992)
(quoting Lindemann Maschinenfabrik GMBH v. American Hoist &
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