Appeal No. 97-1273
Application No. 08/269,818
825 (1988); Ashland Oil, Inc. v. Delta Resins & Refractories,
Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985),
cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential
part of complying with the burden of presenting a prima facie
case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445,
24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
With respect to independent claim 15, the examiner
basically asserts that Glick teaches all the features of the
claimed remote control unit except for physically integrating
the voice transducer in the remote control unit [answer, pages
3-4]. The examiner observes that it would have been obvious
to physically integrate the voice transducer in the remote
control unit to allow the user to have one hand free while the
other hand was holding the remote or to eliminate a separate
unit for the voice transducer [id., page 4].
Appellants argue that the examiner’s position
represents a classic case of hindsight reconstruction of the
claimed invention. Appellants note that the advantages they
obtained by placing the voice transducer in a remote control
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