Appeal No. 1999-1618
Application No. 08/358,354
mail. Nor is this taught or suggested by either Thompson or Fennell. Thompson teaches a
basic telephone configuration in Fig. 7 elements 60 and 60a. In Fig. 8, Thompson further
discloses a menu to select various applications for the display on elements 60 and 60f.
Again, Thompson discloses an enhanced phone application in Fig. 9a with additional
functions 154, but does not disclose detail thereto. While Fennell does discuss the
motivation to notify the user of messages to encourage further phone usage in the section
labeled “The Key to Success” (at page 4 of the DIALOG™ service printout), Fennell merely
states that the customer is encouraged to “call in and check messages.” In our view this is
not a sufficient motivation or suggestion to initiate a call using a soft key. Nor has the
examiner provided a convincing line of reasoning as a motivation for a modification of the
prior art combination to meet this claimed feature. The examiner’s response to appellant’s
general arguments is that appellant is arguing the references individually. We disagree,
while appellant’s arguments are not clearly set forth, appellant does address the claim
limitations and the combined teachings of the references.
On page 7 of the answer, the examiner maintains that Thompson teaches various
aspects of the claimed invention including a “soft key ‘listen’; a soft key ‘view’, a message
menu which contains references to voice messages, text messages and known and
unknown callers.” The examiner cites generally, Figures 7-9(a)-(d) for support of these
teachings. We disagree with the examiner, and do not find the “listen” and “view” soft keys,
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