Appeal No. 1998-0610
Application 08/584,726
The rationale of the examiner is explained as follows (answer at 7): “[B]y
transmitting phonemes, the laborious step of converting text-to-phonemes (Parsons, page
286, lines 6-7) can be advantageously performed by the base station, and not by the
receivers.” But the examiner has cited no prior art which discloses or reasonably suggests
that phonemes associated with written text should be generated at a transmitting base
station and included in the broadcast transmission. On this record, the motivation for this
feature is improperly derived solely from the appellants’ own specification.
The mere fact that the prior art may be modified in the manner suggested by the
Examiner does not make the modification obvious unless the prior art suggests the
desirability of the modification. In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783-84 (Fed. Cir. 1992). It is impermissible to use the claimed invention as an instruction
manual or "template" to piece together the teachings of the prior art so that the claimed
invention is rendered obvious. In re Fritch, 972 F.2d at 1266, 23 USPQ2d at 1784. We
are not inclined to dispense with proof by evidence when the proposition at issue is not
supported by a teaching in a prior art reference, common knowledge or capable of
unquestionable demonstration. See, e.g., In re Knapp-Monarch Co., 296 F.2d 230, 232,
132 USPQ 6, 8 (CCPA 1961).
Furthermore, a substitution of phonemes for corresponding text as is proposed by
the examiner would not yield the appellants’ claimed invention which requires “digitally
coded speech allophone information to be transmitted.” Contrary to the examiner’s
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