Ex Parte MANNING et al - Page 12




          Appeal No. 2001-2270                                                        
          Application 09/235,529                                                      

          Eaton could be used in a parallel attenuator such as Stevens for            
          the same purpose of preventing detection of DTMF tones by the               
          central office.                                                             
               For the reasons stated above, we conclude that the examiner            
          has established a prima facie case of obviousness which                     
          appellants have not shown to be in error.  Accordingly, the                 
          rejection of claims 1, 3-6, 9, and 11 is sustained.                         


          Group II: Claims 2 and 10                                                   
               Representative claim 2 recites that the load attenuates the            
          dialing signals by "at least 38 dB."                                        
               Appellants argue that neither of the references suggests               
          this level of attenuation and there is no evidence why such a               
          level of attenuation would be desirable (Br8).                              
               The examiner concludes that 38 dB would have been obvious              
          because one of ordinary skill in the art, knowing from Stevens              
          that the attenuation should be selected to prevent detection of             
          the DTMF tones by the central office, is presumed to have had               
          sufficient skill to determine a specific value by routine                   
          experimentation (EA9), citing In re Boesch, 617 F.2d 272, 276,              
          205 USPQ 215, 219 (CCPA 1980) ("[D]iscovery of an optimum value             
          of a result effective variable in a known process is ordinarily             
          within the skill of the art."); In re Aller, 220 F.2d 454, 456,             
          105 USPQ 233, 235 (CCPA 1955) ("[W]here the general conditions of           

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