Appeal No. 1998-2870
Application 08/429,954
external programming data in memory, the Examiner should have no
trouble finding a reference.
In summary, we find that the combination of Biggs and
Snyder, as set out by the Examiner, discloses or suggests the
subject matter of the independent apparatus claims except for the
limitations of using the CPU to receive and store data.
Accordingly, the Examiner has failed to establish a prima facie
case of obviousness. The references to Berry, applied to
claim 13, and Canuel, applied to claim 25, do not cure the
deficiencies of Biggs and Snyder as to the independent claims.
The rejection of claims 1-25 is reversed.
We find that Snyder discloses that "the micro controller 52
may be connected with an off-premise DTMF modem, which
automatically programs the computer" (col. 7, lines 40-42). This
suggests that the micro controller 52 receives and necessarily
stores programming data in the memory. Appellants are
responsible for knowing express teachings of the references.
However, since Snyder does not expressly recite storing data in
memory some obviousness reasoning is required and we decline to
provide the obviousness rationale in the first instance because
it would constitute a new ground of rejection. See In re Kronig,
539 F.2d 1300, 1302, 190 USPQ 425, 426 (CCPA 1976) (the "ultimate
criterion" of whether a rejection is new is "whether appellants
have had fair opportunity to react to the thrust of the
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