Appeal No. 2003-1605
Application No. 08/982,934
illustration indicates that the “golf” category has been selected
four times, there is no disclosure in the described operation of
Cole that would provide any indication of the navigational path a
user may have taken to arrive at the “golf” destination.
It is further our view that even assuming, arguendo, that the
disclosure of Cole can somehow be construed as disclosing the
claimed reference path counting feature, the Examiner has not
provided any basis for the assertion of obviousness to the skilled
artisan of including an “informing program” at the client
processor, a feature present in each of the appealed independent
claims. The Examiner, while recognizing that Cole has no teaching
of any such informing program, nevertheless asserts (Answer, page
3) that the skilled artisan would have been motivated and found it
obvious to include such an informing program “ . . . because such a
modification would allow Cole’s system to have a Web browser tool
that is executed on the client computer and keeps track of which
URLs/Web pages the user has previously accessed.”
The mere fact, however, 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, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992). Further, despite the Examiner’s attempt
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