Ex parte BANERJEE et al. - Page 14

          Appeal No. 1998-0943                                                        
          Application No. 08/300,500                                                  

          obviousness.  Note In re Oetiker, 977 F.2d 1443, 1445, 24                   
          1443, 1444 (Fed. Cir. 1992).                                                
               With respect to dependent claims 4 and 12, the Examiner,               
          as the basis for the obviousness rejection, proposes to modify              
          the wireless communication system disclosure of McCain by                   
          relying on More to supply the missing teaching of providing                 
          handwriting recognition to the host computer “so detailed user              
          input may be detected by the system” (Answer, page 5).                      
               In response, Appellants assert (Brief, page 16) that the               
          Examiner has failed to establish a prima facie case of                      
          obviousness since proper motivation for the Examiner’s                      
          proposed combination has not been set forth.  We agree.  It is              
          our opinion that the Examiner has combined the general                      
          teachings of the handwriting recognition system of More with                
          the touch screen input system of McCain in some vague manner                
          without specifically describing how the teachings would be                  
          combined.  This does not persuade us that one of ordinary                   
          skill in the art having the references before her or him, and               
          using her or his own knowledge of the art, would have been put              
          in possession of the claimed subject matter.                                

Page:  Previous  5  6  7  8  9  10  11  12  13  14  15  16  17  18  19  Next 

Last modified: November 3, 2007