Ex parte SMITH - Page 11




          Appeal No. 1997-3276                                      Page 11           
          Application No. 08/478,567                                                  


               Here, the examiner fails to identify a sufficient                      
          suggestion to combine either Iggulden or Walsh with either                  
          Noto or Sato.  Both Noto and Sato teach storing telephone                   
          numbers in and retrieving telephone numbers from a local                    
          database.  Specifically in Noto, the telephone numbers are                  
          stored in a memory section 8 of a multi-function key input                  
          device.  Col. 3, ll. 32-33.  Specifically in Sato, the                      
          telephone numbers are stored in storage areas 88f and 88g of                
          an information processing apparatus.  Col. 17, ll. 18-19.  The              
          disclosures of the references reveal that both Noto’s device                
          and Sato’s apparatus are complete, self-contained units                     
          designed to operate with a local database.                                  


               Rather than providing a line of reasoning to explain why               
          combining Iggulden’s or Walsh’s teaching of using a remote                  
          database with Noto’s self-contained device would have been                  
          desirable, the examiner merely concludes, “it would have been               
          obvious ... to modify Noto to use the communication means (in               
          the electronic telephone book) to retrieve a telephone number               
          via the telephone line for storage and display in response to               
          user input command for subsequent use.”  (Examiner’s Answer at              







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