Appeal No. 2003-1328
Application No. 09/007,493
having ordinary skill in the pertinent art would have been led to
modify the prior art or to combine prior art references to arrive
at the claimed invention. See also In re Rouffet, 149 F.3d 1350,
1355, 47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Even when obvious-
ness is based on a single prior art reference, there must be a
showing of a suggestion or motivation to modify the teachings of
that reference. In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d
1313, 1316-17 (Fed. Cir. 2000), citing B.F. Goodrich Co. v.
Aircraft Breaking Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314,
1318 (Fed. Cir. 1996).
Upon our review of Tyler, we agree with Appellants’ analysis
of the reference and note that the disclosed manual editing of
Tyler lacks any guidance as to how the display positions should
be adjusted by the user other than the desire of the user.
Although the user can change the position of the hotspots, there
is no teaching or suggestion that such change is done based upon
any “determined display positions.” We do not need to address
the Examiner’s arguments related to whether the adjustment is
done automatically or manually since it is the claimed adjusting
of the display position based on the determined positions that
the examiner has failed to establish by any specific teachings or
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