Appeal 2006-2594
Application 10/034,394
B. OBVIOUSNESS DETERMINATION
"Having determined what subject matter is being claimed, the next
inquiry is whether the subject matter would have been obvious." Ex Parte
Massingill, No. 2003-0506, 2004 WL 1646421, at *3 (B.P.A.I 2004). "Non-
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references." In re Merck & Co., 800 F.2d 1091, 1097, 231 USPQ 375, 380
(Fed. Cir. 1986) (citing In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981)). In determining obviousness, furthermore, a reference "must
be read, not in isolation, but for what it fairly teaches in combination with
the prior art as a whole." Id., Id.
Here, the rejection is based on the combined teachings of Bickmore
and Patil. Because the primary reference "transform[s] all images in a page
by pre-defined scaling factors . . . and mak[es] the reduced images hypertext
links back to the originals," (p. 539), we find that Bickmore replaces each
graphical image with a placeholder. In fact, the Appellant admits that "such
'thumbnail' in-page hyperlinks may indeed be placeholders. . . ." (Br. 7.)
As aforementioned, Patil disclose that its combination of accelerator
keys and pop-up symbols speeds the selection of options without requiring
removal of hands from a keyboard, memorization, or manually checking a
reference guide. We further find that such advantages would have provided
a motivation to employ accelerator keys and pop-up accelerator key symbols
with the thumbnail in-page hyperlinks. When the teachings were so
combined, we find that the combination would have suggested replacing
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