Appeal No. 2001-2101
Application No. 09/111,495
Given the disparity of problems addressed by the applied prior
art references, and the differing solutions proposed by them, it
is our view that any attempt to combine them in the manner
proposed by the Examiner could only come from Appellants’ own
disclosure and not from any teaching or suggestion in the
references themselves. 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
desirability of the modification. In re Fritch, 972 F.2d 1260,
1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992).
Further, while the Examiner, at page 6 in the “Response to
Argument” portion of the Answer, suggests that the specifically
claimed dragging and dropping of “command” items actually refers
to the dragging of “data objects” such as in Hahn, we find no
support for the Examiner interpreting the claim language in this
manner. In our view, the skilled artisan would recognize and
appreciate the distinction between “command” items, which are
instructions which cause an action to be performed, and “data
objects” such as the files and folders described in Hahn.
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