Appeal No. 1997-3276 Page 12
Application No. 08/478,567
6, 8-9.) He makes a similar conclusion regarding combining
Iggulden’s or Walsh’s teaching with Sato’s self-contained
apparatus. (Id. at 11, 13.) Because all relevant telephone
numbers are stored in both Noto’s device and Sato’s apparatus,
however, there is no need to find additional numbers stored
remotely. The examiner’s combination of references would
require a change in the basic principles under which Noto’s
device and Sato’s apparatus were designed to operate. The
examiner fails to allege, let alone show, that Ishizu,
Johnston, or Matsui remedies these defects.
Because neither Noto’s device nor Sato’s apparatus needs
to use telephone numbers stored remotely, we are not persuaded
that the prior art would have suggested the desirability, and
thus the obviousness, of combining either Iggulden’s or
Walsh’s teaching of using a remote database with either Noto’s
or Sato’s teaching of a local database. The examiner’s
conclusions impermissibly rely on the appellant’s teachings or
suggestions to piece together the teachings of the prior art.
He has not established a prima facie case of obviousness.
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