Ex Parte NORCOTT et al - Page 7




          Appeal No. 1998-2870                                                        
          Application 08/429,954                                                      

          can be made external to a standard telephone; and (2) the fact              
          that Snyder discloses that it was known to provide other kinds of           
          add-on devices for standard telephones.  We find very strong                
          suggestions to combine the teachings of Biggs and Snyder.                   
               Appellants argue that Snyder does not suggest separating the           
          disclosed features of Biggs because Snyder must disable the                 
          telephone which is the exact opposite of Biggs (Br10).  The                 
          operation of Snyder does not affect Snyder's teaching of                    
          providing the service device as a separate external device.                 
          Also, as discussed, infra, Snyder only disables the telephone               
          during operation of the amenities service device after which the            
          telephone is turned back on while the micro controller remains              
          enabled.  This is not inconsistent with Biggs.                              
               Appellants argue that the Examiner improperly relied on                
          their disclosure as motivation for the combination (Br12-13).               
          We agree with the Examiner's finding (EA6; EA9) that making a               
          separate unit apart from the telephone to save cost was                     
          notoriously well known.  This finding is supported by Snyder's              
          description of add-on devices (col. 1, lines 5-12).  In any case,           
          however, Snyder expressly teaches that an amenities service                 
          device can be made as a separate external unit.  Accordingly, the           
          Examiner did not rely on hindsight.                                         




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