Appeal No. 95-3681
Application 07/956,705
However, other than an Appellants’ opinion, Appellants have not
provided any evidence in the record that Treat is not enabling.
A reference is presumed to be enabled for the purpose of an
obviousness rejection. The reference may also be enabled by
other references. The burden rests with the applicants to
establish that the prior art is not enabling. In re Payne, 606
F.2d 303, 314-15, 203 USPQ 245, 255-56 (CPA 1979); In re Epstein,
32 F.3d 1559, 1568-69, 31 USPQ2d 1817, 1823-24 (Fed. Cir. 1994).
Furthermore, the test of obviousness is not whether features of
a secondary reference may be bodily incorporated into the primary
reference's structure, nor whether the claimed invention is
expressly suggested in any one or all of the references; rather,
the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art. See In re
Keller, 642 F.2d 413, 425, 208 USPQ 871, 881 (CCPA 1981).
On pages 7 through 10, Appellants further argue that
Treat does not teach a method for automatic selection of a
carrier for placement of a telephone call. Appellants point to a
portion of Treat that teaches displaying a list of carriers for
user selection. However, appellants overlook another embodiment
of Treat which does teach a method for automatic selection of a
carrier for placement for a telephone call. In particular, Treat
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