Appeal No. 1998-0918
Application 08/314,451
essentially the reasons set forth in the briefs. The
relationship of automatically commencing operation of the note
taking function before a call is made is simply not suggested
by either of the references applied by the examiner. The
confirm window of Putnam disappears if no input is made by the
user so that note taking does not occur automatically. The
examiner admits that Norwood requires a manual input by the
user, and such a manual input does not fall within the meaning
of automatic operation as argued by the examiner.
Thus, the examiner’s findings on the differences
between the claimed invention and the prior art teachings are
incorrect. The examiner, therefore, has failed to establish a
prima facie case of obviousness. The question of whether the
actual differences between the claimed invention and the
teachings of the applied prior art would have been obvious
within the meaning of 35 U.S.C. § 103 has not been established
on this record. In other words, this record does not reflect
the examiner’s position on the obviousness of modifying the
systems of Putnam and Norwood to carry out the automatic
operation as claimed. Failure to properly address the
differences between the claimed invention and the applied
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