Ex parte Okamoto

Board of Patent Appeals and Interferences

Oct 13, 2000

08314451 (B.P.A.I. Oct. 13, 2000)

1
The opinion in support of the decision being entered today was
not written for publication is not binding precedent of the
board.
Paper No. 18
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte MASAYOSHI OKAMOTO
__________
Appeal No. 1998-0918
Application 08/314,451
___________
ON BRIEF
___________
Before HAIRSTON, JERRY SMITH, and LALL, Administrative Patent
Judges.
JERRY SMITH, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on the appeal under 35 U.S.C. § 134
from the examiner’s rejection of claims 4-12, which constitute
all the claims remaining in the application.
The disclosed invention pertains to a telephone note
taking device which is specifically adapted to automatically
take notes from a user before the user places an outgoing
telephone call through the device.
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Representative claim 7 is reproduced as follows:
7. A telephone note-taking device, adapted to take
notes from a user before the user places an outgoing telephone
call through the telephone note-taking device, comprising:
selecting means, responsive to user selection, for
enabling the user to select a telephone using mode through
which, when selected, the telephone note-taking device is
instructed to accept notes to be entered by the user and
subsequently, upon a further command from the user, initiate
an outgoing telephone call to a called party;
party designating/inputting means, responsive to said
selecting means, for enabling the user to designate the called
party to which the telephone call is to be directed, wherein
the party designating/inputting means begins operation when
the user selects the telephone using mode via the selecting
means;
transmitting means, operative in conjunction with said
selecting means and responsive to the further command from the
user, for initiating the outgoing telephone call between the
user and the called party, said further command being separate
from and subsequent to the user selection of the telephone
using mode;
note inputting means for accepting the notes entered
by the user before the outgoing telephone call is initiated,
said note inputting means automatically commencing operation,
so as to accept the notes, sequentially after the party
designating/inputting means starts operation but before the
user, through the selecting means, commands the device means
to initiate the telephone call;
storing means, connected to said note inputting means,
for storing said notes entered via the note inputting means;
and
note displaying means, connected to the note inputting
means, for displaying the notes to the user as the notes are
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entered thereby.
The examiner relies on the following references:
Norwood 5,063,600 Nov. 05, 1991
Putnam et al. (Putnam) 5,065,309 Nov. 12, 1991
Claims 4-12 stand rejected under 35 U.S.C. § 103. As
evidence of obviousness the examiner offers Putnam in view of
Norwood.
Rather than repeat the arguments of appellant or the
examiner, we make reference to the briefs and the answer for
the respective details thereof.
OPINION
We have carefully considered the subject matter on
appeal, the rejection advanced by the examiner and the
evidence of obviousness relied upon by the examiner as support
for the rejection. We have, likewise, reviewed and taken into
consideration, in reaching our decision, the appellant’s
arguments set forth in the briefs along with the examiner’s
rationale in support of the rejection and arguments in
rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record
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before us, that the examiner has failed to establish a prima
facie case for the obviousness of the invention as set forth
in claims 4-12. Accordingly, we reverse.
In rejecting claims under 35 U.S.C. § 103, it is
incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
as a whole or knowledge generally available to one having
ordinary skill in the art. Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.),
cert. denied, 488 U.S. 825 (1988); Ashland Oil, Inc. v. Delta
Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657,
664 (Fed. Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS
Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d 1572, 1577, 221
Appeal No. 1998-0918
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USPQ 929, 933 (Fed. Cir. 1984). These showings by the
examiner are an essential part of complying with the burden of
presenting a prima facie case of obviousness. Note In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts to the
applicant to overcome the prima facie case with argument
and/or evidence. Obviousness is then determined on the basis
of the evidence as a whole and the relative persuasiveness of
the arguments. See Id.; In re Hedges, 783 F.2d 1038, 1039,
228 USPQ 685, 686 (Fed. Cir. 1986); In re Passaic, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
Only those arguments actually made by appellant have been
considered in this decision. Arguments which appellant could
have made but chose not to make in the brief have not been
considered [see 37 CFR § 1.192(a)].
With respect to each of the claims on appeal, the
examiner points out how Putnam is relied on in meeting the
claimed invention. The examiner acknowledges that Putnam does
not teach the inputting of notes before a call is made
[answer, page 5]. Norwood is cited as teaching an information
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management system which provides for the entry of notes before
a call is made. The examiner asserts that it would have been
obvious to the artisan to include Norwood’s information
management system with the telephone note taking system of
Putnam to allow the editing of notes without requiring that a
telephone number be called [id.].
Appellant argues that the collective teachings of
Putnam and Norwood “neither teach nor suggest note inputting
means for accepting notes entered by the user before an
outgoing telephone call is initiated, and automatically
commencing operation, so as to accept the notes, sequentially
after a party designating/inputting means starts operation but
before the user, through a selecting means, commands the
device to initiate the telephone call” [brief, page 9].
Although the examiner acknowledges that the operation
of each of Putnam and Norwood requires that the user make a
manual selection to effect the note taking function, the
examiner finds these manual selections to be within the
claimed automatic operation [answer, pages 7-8 and 10].
We agree with the position argued by appellant for
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essentially the reasons set forth in the briefs. The
relationship of automatically commencing operation of the note
taking function before a call is made is simply not suggested
by either of the references applied by the examiner. The
confirm window of Putnam disappears if no input is made by the
user so that note taking does not occur automatically. The
examiner admits that Norwood requires a manual input by the
user, and such a manual input does not fall within the meaning
of automatic operation as argued by the examiner.
Thus, the examiner’s findings on the differences
between the claimed invention and the prior art teachings are
incorrect. The examiner, therefore, has failed to establish a
prima facie case of obviousness. The question of whether the
actual differences between the claimed invention and the
teachings of the applied prior art would have been obvious
within the meaning of 35 U.S.C. § 103 has not been established
on this record. In other words, this record does not reflect
the examiner’s position on the obviousness of modifying the
systems of Putnam and Norwood to carry out the automatic
operation as claimed. Failure to properly address the
differences between the claimed invention and the applied
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prior art results in a failure to establish a prima facie case
of obviousness.
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Since all the appealed claims recite the above
discussed features, we do not sustain the examiner’s rejection
of any of the appealed claims on this record. Therefore, the
decision of the examiner rejecting claims 4-12 is reversed.
REVERSED
)
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JERRY SMITH )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
PARSHOTAM S. LALL )
Administrative Patent Judge )
Appeal No. 1998-0918
Application 08/314,451

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