Appeal No. 2003-0493
Application No. 09/108,716
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 Lee, 277 F.3d at 1343, 61 USPQ2d at 1433,
that when making an obviousness rejection based on combination, “there must be
some motivation, suggestion or teaching of the desirability of making the specific
combination that was made by Applicant” (quoting In re Dance, 160 F.3d 1339, 1343,
48 USPQ2d 1635, 1637 (Fed. Cir. 1998).
As stated supra we find that the scope of the independent claims includes that
the window select a number, more than one, of elements in a list to be considered. We
note that the examiner has not relied upon evidence of record to provide the motivation,
to modify Thompson to make use of a window. We find that the motivation asserted by
the examiner is not related to the claimed invention. As stated supra we do not find that
the scope of the limitation of a first and second window to include a visual component.
As such, we find that the motivation “using a window… makes it easer for a user to
control or view the individual chosen items” is not logically related to the claimed
invention.
Additionally, we find that Thompson neither teaches a window nor provides
suggestion to use a window. We find that Thompson teaches a method to correlate
entries on an adding machine tape with the amount on a check (Thompson, Column 4,
lines 11-14). The adding machine tape and check entries are on two lists (Thompson,
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