Ex Parte NORCOTT et al - Page 6




          Appeal No. 1998-2870                                                        
          Application 08/429,954                                                      

          products have been developed for use in parallel with a standard            
          telephone, such as automatic telephone answering machines, card             
          readers, check verification devices, pre-programmed automatic               
          dialers, etc. (col. 1, lines 5-12).  (Note that while the device            
          is externally connected in series, figure 1, the circuitry is               
          electrically connected in parallel to the telephone lines, as is            
          Appellants' circuitry.)  This would have been an additional                 
          suggestion to one of ordinary skill in the art to make the                  
          amenities service device of Biggs as a separate external device,            
          connected between the standard telephone and the external                   
          apparatus.  Although Snyder does not state why add-on devices               
          were developed for use with standard telephones, and while the              
          reasons are not necessary to the rejection given the teaching in            
          Snyder of doing what Appellants have done, we agree with the                
          Examiner's reasoning (EA6) that one of ordinary skill in the art            
          would have known to use an add-on device to avoid the need and              
          expense of replacing existing standard telephones.                          
               Appellants argue that the references are not combinable                
          because there is no suggestion of the desirability of the                   
          combination (Br9-10).  As discussed in the preceding paragraph,             
          we find at least two suggestions in Snyder to modify the                    
          amenities service device in Biggs to be separate:  (1) the fact             
          that both Biggs and Snyder are directed to amenities services               
          devices and that Snyder teaches that the amenities service device           

                                        - 6 -                                         





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007