Application No. 2006-3067
Appeal No. 09/952,953
the first menu. Inoue specifically teaches that overlapping displays can be
advantageous for displaying a larger amount of information in the same display area.
Thus, as noted by the examiner, the artisan would have been motivated to use
overlapping menu areas in Nomura so that the size of the control panel could be
reduced. Appellants’ argument that Inoue’s teaching of the general advantages of
overlapping menus does not recognize the problem of diverging menu trees is not
persuasive. The test for obviousness is whether the references would have suggested
doing what appellants have done. In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). Thus, the absence of express suggestion or motivation in the applied
prior art is not alone determinative. The prior art need not suggest solving the same
problem set forth by appellants. In re Dillon, 919 F.2d 688, 692-693, 16 USPQ2d 1897,
1901 (Fed. Cir. 1990) (in banc) (overruling in part In re Wright, 848 F.2d 1216, 1220, 6
USPQ2d 1959, 1962 (Fed. Cir. 1988). Thus, the advantage of overlapping menus as
taught by Inoue is enough to support the combination of this teaching with the plural
menus displayed in Nomura. Appellants have indicated in the specification that the
overlapping of displays was an improvement on the display of the diverging menu trees
of the admitted prior art. Even if Inoue teaches the use of overlapping displays for a
different reason, it still renders the claimed invention obvious as long as the advantages
taught by Inoue apply to the display of Nomura as well. As noted above, we find that it
does.
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