Appeal No. 2006-2177 Page 6
Application No. 10/127,152
to an embodiment of the present invention." (Spec. at 13.) The Figure shows that the
ribbon 310 is "separate" from the rest of the contents of the window 300 in the sense of
being a distinct element thereof. Reading the representative claim in view of the Figure,
therefore, the limitations merely require a scrolling area that is a distinct element of a
display window.
b. Obviousness Determination
"Having determined what subject matter is being claimed, the next inquiry is
whether the subject matter would have been obvious." Massingill, at *3. The question
of obviousness is "based on underlying factual determinations including . . . what th[e]
prior art teaches explicitly and inherently. . . ." In re Zurko, 258 F.3d 1379, 1383, 59
USPQ2d 1693, 1696 (Fed. Cir. 2001) (citing Graham v. John Deere Co., 383 U.S. 1, 17-
18, 148 USPQ 459, 467 (1966); In re Dembiczak, 175 F.3d 994, 998, 50 USPQ2d 1614,
1616 (Fed. Cir. 1999); In re Napier, 55 F.3d 610, 613, 34 USPQ2d 1782, 1784 (Fed.
Cir. 1995)).
Here, it is uncontested that Siegel teaches a scroll area. To wit, the appellants
admit that the reference "shows thumbnail icons and a scroll bar at the bottom of the
figure at the bottom of page 223." (App. Br. at 11.) We find that this figure depicts the
thumbnail icons and scroll bar as a distinct element of the "Elliott/Advertising – Print
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