Ex parte KIM - Page 4




              Appeal No. 1999-2594                                                                                       
              Application No. 08/777,720                                                                                 


              respective positions articulated by appellant and the examiner.  As a consequence of our                   
              review, we make the determinations which follow.                                                           
                     Appellant argues that Fukushima does not teach or fairly suggest the printing of a                  
              list of registered abbreviated dial numbers after a predetermined number of entries of 1)                  
              dial numbers not corresponding to the telephone numbers registered in the facsimile                        
              system, or 2) dial numbers that were registered in the system, but stopped in response to                  
              the user actuating a stop key.   (See brief at page 6.)  We agree with appellant.  Further,                
              we note that the examiner admits that Fukushima does not teach the above limitations, but                  
              the examiner maintains that the invention, as claimed, would have been obvious.  (See                      
              answer at page 5.)  The examiner maintains that Fukushima identifies the same problem                      
              and provides a print key to print the list of abbreviated facsimile numbers.  (See answer at               
              page 6.)  We disagree with the examiner.  While the problem of Fukushima is similar and                    
              the solution is similar, we find that the teachings of Fukushima are only directed to the                  
              printing of labels for the keys and for the memory cards used.  Therefore, we find no                      
              suggestion or motivation to count the number of entries of abbreviated dial numbers made                   
              in error or entries of correct abbreviated dial numbers which are stopped using the stop                   
              key and then print out the list of registered abbreviated telephone numbers.                               






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