Ex parte ISHIZAWA et al. - Page 6




          Appeal No. 1999-0891                                       Page 6           
          Application No. 08/676,484                                                  


          open position ....”  P. 3, ll. 26-32.  “[C]omputer 10 also                  
          includes a microphone and a speaker such as pop-up speaker                  
          phone 50 ....”  P. 5, ll. 1-3.  The examiner admits, “Morris                
          has failed to disclose having a pair of speakers at both sides              
          of the display.”  (Final Rejection at 3.)  For its part,                    
          Tsukizoe teaches “two speakers placed at the left and right                 
          sides of an image display device such as CRT and stereo sound               
          output device that outputs sound from these speakers ....”                  
          Tsukizoe Translation, p. 3.                                                 


               The examiner fails to identify a sufficient suggestion to              
          combine the teachings of the references.  “[I]dentification in              
          the prior art of each individual part claimed is insufficient               
          to defeat patentability of the whole claimed invention.  In re              
          Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir.                
          2000) (citing In re Rouffet, 149 F.3d 1350, 1357, 47 USPQ2d                 
          1453, 1457 (Fed. Cir. 1998)).  “Rather, to establish                        
          obviousness based on a combination of the elements disclosed                
          in the prior art, there must be some motivation, suggestion or              
          teaching of the desirability of making the specific                         
          combination that was made by the applicants.”  Id., 55 USPQ2d               







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