Appeal No. 97-4150
Application No. 08/186,820
on prohibited hindsight to establish the obviousness of the
claimed invention. For this reason, the obviousness rejection of
claims 1 through 5, 7, 9 through 11, 13, 15, 16, 18, 20 and 24
through 58 based upon the teachings of Arbabzadah is reversed.
A stored table of prohibited calls in the TCI publication
includes direct dialed international calls (pages 7 and 8). The
examiner states (Answer, page 13) that “if the owner of the TCI
device desires to prevent users from making international calls
by using access codes, this can obviously be achieved by simply
programming the sequence 10-XXX-01 (or any other similar
sequence) in the deny table.” Appellant’s response (Brief, page
23) is that:
As with the Arbabzadah reference, the TCI
reference does not provide a suggestion to be
programmed as . . . argued. More specifically, the TCI
reference does not specify any motivation to program
the TCI device as recited by Appellant’s claims to
evaluate the third plurality of dialing digits and to
block the call if these digits are international
dialing digits. Appellant’s statements regarding the
Arbabzadah reference apply equally to the rejection
based upon the TCI reference. The fact that TCI “could
be” programmed to read on Appellant’s claims is
irrelevant without a teaching or motivation from the
art to make the desired modification.
We agree with appellant that “[h]indsight, alone, is an improper
basis to reject Appellant’s claims” (Brief, page 24). The
obviousness rejection of claims 1 through 5, 7, 9 through 11, 13,
11
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