Appeal No. 2002-2023 Paper 31
Application No. 08/689,526 Page 11
"cursor orientation" to make the cursor "reappear" (c. 3, l. 57 - c. 4, l. 45). For example,
in McCambridge Figure 3, (right), when the cursor 304 points to a position in region 302
of the display screen 300, it is visible on the display screen. However, if the cursor is
positioned to point to another region, e.g., 306, 310 or 314, it may not be visible.
Therefore, upon detecting that the cursor is in one of these other regions, the method's
"cursor component" determines, e.g., that the cursor 308 in right edge region 306
should be aligned so that the cursor is visible on the screen. [See c. 4, l. 46 - c. 6, l. 6.]
VIII. Analysis
Obviousness is a question of law based on findings of underlying facts relating to
the prior art, the skill of the artisan, and objective considerations. See Graham v. John
Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966). To establish a prima facie case
of obviousness based on a combination of the content of various references, there must
be some teaching, suggestion or motivation in the prior art to make the specific
combination that was made by the applicant. In re Raynes, 7 F.3d 1037, 1039, 28
USPQ2d 1630, 1631 (Fed. Cir. 1993); In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1445 (Fed. Cir. 1992). Obviousness cannot be established by hindsight
combination to produce the claimed invention. In re Gorman, 933 F.2d 982, 986, 18
USPQ2d 1885, 1888 (Fed. Cir. 1991). As discussed in Interconnect Planning Corp. v.
Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed. Cir. 1985), it is the prior art itself,
and not the applicant's disclosure, that must establish the obviousness of the
combination.
As to all of the independent claims, appellant argues that the prior art does not
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