Appeal No. 1998-0943
Application No. 08/300,500
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d
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.
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