Appeal 2007-0338
Application 09/870,223
We next consider the Examiner’s rejection of claims 3-8 and 11-16
under 35 U.S.C § 103(a) as unpatentable over Osder. In rejecting claims
under 35 U.S.C. § 103, it is incumbent upon the Examiner to establish a
factual basis to support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). If that burden
is met, the burden then shifts to the applicant to overcome the prima facie
case with argument and/or evidence. Obviousness is then determined on the
basis of the evidence as a whole and the relative persuasiveness of the
arguments. See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992); In re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686
(Fed. Cir. 1986); In re Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788
(Fed. Cir. 1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976).
The Examiner's rejection essentially finds that Osder teaches every
claimed feature except for the respective attributes of the voice prompts
recited in claims 3-8 and 11-16 (i.e., different speakers, different levels of
formality, music, audio tone, same meaning but different wording). The
Examiner, however, states that since callers may have different preferences
and purposes, providing the voice prompts in Osder with the various claimed
attributes would have been obvious to the skilled artisan (Answer 16).
Appellant argues that the Examiner’s rationale for modifying Osder is
merely speculative in failing to show where the prior art suggests such a
modification (Br. 11-19; Reply Br. 14-17).
We will sustain the Examiner’s rejection of claims 3-8 and 11-16. At
the outset, we note that specifying the various attributes of voice prompts in
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