Appeal No. 1998-2191
Application No. 08/284,708
billing period information from the provider’s real-time node computer to the user phone
terminal during the two-way call set-up period. While in hindsight the reasons for modifying
the prior art may appear obvious -- the reasons alleged by the examiner at pages 5 and 9
of the Answer -- the reasons do not arise from the prior art as represented by the
disclosures of Hattori and Ortiz.
The obviousness inquiry requires the decision maker to return to the time the
invention was made. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050,
5 USPQ2d 1434, 1438 (Fed. Cir. 1988). In view of the ubiquitous cell phones, and cell
phone networks, of which we have current knowledge, it is tempting to view appellant’s
contribution to the art from today’s perspective. In the instant rejection, however, the
Hattori and Ortiz references comprise the only evidence we have of what the artisan knew
at the time of invention. We agree with appellant that the references fail to establish the
obviousness of the subject matter as a whole of instant claim 1. Further, the rejection of
the other independent claim on appeal (claim 17) fails to establish the obviousness of the
subject matter. (See Answer, page 6.)
The allocation of burdens requires that the USPTO produce the factual basis for its
rejection of an application under 35 U.S.C. § § 102 and 103. In re Piasecki, 745 F.2d
1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984) (citing In re Warner, 379 F.2d 1011,
1016, 154 USPQ 173, 177 (CCPA 1967)). The one who bears the initial burden of
presenting a prima facie case of unpatentability is the examiner. In re Oetiker, 977 F.2d
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