Ex Parte BYUN - Page 8




          Appeal No. 2002-1280                                                        
          Application 08/995,996                                                      

          The question remains whether the examiner is correct in assuming            
          that the combination of Drori and Karasawa teaches all the                  
          features of the claimed invention.  This requires us to address             
          appellant's arguments.  In particular, in the last argument, we             
          find one claim limitation to be missing.                                    
               Appellant argues that it is not necessary for the user in              
          Drori to know the specific code that is transmitted from the                
          transmitter to the receiver, which is opposite to, and amounts to           
          a teaching away from, the present invention where the user                  
          programs in the code (Br7-8; RBr4-5).                                       
               While Drori states that "the user is not required to encode            
          the [transmitter]" (col. 7, lines 54-55), this is for the user's            
          convenience because, as discussed in the background, most users             
          do not have the skill to set codes.  One of ordinary skill in the           
          art would not interpret Drori to teach that the user cannot set             
          the code.  Thus, Drori does not teach away from the user setting            
          the signature code.  See In re Gurley, 27 F.3d 551, 553,                    
          31 USPQ2d 1130, 1131 (Fed. Cir. 1994) ("A reference may be said             
          to teach away when a person of ordinary skill, upon [examining]             
          the reference, would be discouraged from following the path set             
          out in the reference, or would be led in a direction divergent              
          from the path that was taken by the applicant.").                           
               At the oral hearing, it was argued that it would not make              
          sense to allow the user to set the signature code because this              

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