Appeal No. 1998-0644
Application 08/637,588
F.2d 1540, 1554, 220 USPQ 303, 313 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
The examiner quotes several portions of Barnes in
support of his position that Barnes fully meets the claimed
invention [answer, pages 4-7]. Appellants argue that Barnes
does not teach or suggest the step of interpreting a new call
signal in the network as a request to place the active call on
hold [brief, page 5]. We have carefully considered the record
in this case, and we agree with the examiner that Barnes
anticipates the invention as set forth in claims 22 and 23.
The starting point for any analysis of anticipation
has to be a consideration of the scope of the claimed
invention. A key feature of the examiner’s rejection is the
examiner’s interpretation that to place a call on hold broadly
means that a telephone connection is maintained. The examiner
points to the request for a conference call in Barnes as
meeting the recitations of claims 22 and 23. When an ongoing
call by a mobile unit is taking place in Barnes, and the user
desires to add an additional instrument, Barnes discloses that
the connection between the original two parties is maintained
while the call is placed to the telephone instrument to be
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