Appeal No. 2004-0373
Application No. 08/939,064
fail to see, however, how or why the artisan would be motivated
to add a user control of the windows display in Elliott when
Elliott’s primary reason for providing automatic window movement
is to relieve the user of the inconvenience of manually moving
windows from an overlapping configuration. 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir.
1992). In our view, given the disparity of problems addressed by
the applied prior art references, and the differing solutions
proposed by them, 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.
For the reasons discussed above, since the Examiner has not
established a prima facie case of obviousness, the 35 U.S.C.
§ 103(a) rejection of independent claim 1, as well as claims 2-4
dependent thereon, is not sustained.
Turning to a consideration of the Examiner’s 35 U.S.C.
§ 103(a) rejection of claims 5-7 and 10, we note that, while we
found Appellants’ arguments to be persuasive with respect to the
obviousness rejection of claims 1-4, we reach the opposite
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