Appeal No. 1998-0644
Application 08/637,588
which identifies the new call but does not identify the active
call [brief, page 7]. When the request for a new call occurs
in Barnes, the user must transmit the new telephone number to
the network. We interpret this new telephone number as being
the claimed call reference value. Since this value identifies
the new call but does not identify the active call, the
recitation of claim 23 is fully met. Therefore, we also
sustain the rejection of claim 23 under 35 U.S.C. § 102.
We now consider the rejection of claims 24-26 under 35
U.S.C. § 103 as unpatentable over the teachings of Pugh in
view of Barnes. In rejecting claims under 35 U.S.C. § 103, it
is incumbent upon the examiner to establish a factual basis to
support the legal conclusion of obviousness. See In re Fine,
837 F.2d 1071, 1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In
so doing, the examiner is expected to make the factual
determinations set forth in Graham v. John Deere Co., 383 U.S.
1, 17, 148 USPQ 459, 467 (1966), and to provide a reason why
one having ordinary skill in the pertinent art would have been
led to modify the prior art or to combine prior art references
to arrive at the claimed invention. Such reason must stem
from some teaching, suggestion or implication in the prior art
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