Appeal No. 1999-2304
Application 08/667,242
to the applicant to overcome the prima facie case with
argument and/or evidence. Obviousness is then determined on
the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Id.; In re Hedges, 783
F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir.
1984); and In re Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143,
147 (CCPA 1976). Only those arguments actually made by
appellants have been considered in this decision. Arguments
which appellants could have made but chose not to make in the
brief have not been considered [see 37 CFR
§ 1.192(a)].
The rejection of all claims on this basis
fundamentally relies on a combination of Saiki and Ludwig.
The examiner asserts that Saiki teaches the claimed invention
except for a remote independent public directory service. The
examiner cites Ludwig as teaching this feature, and the
examiner finds that it would have been obvious to the artisan
to add this feature to Saiki [answer, page 7]. Appellants
argue that the remote directory services disclosed by Ludwig
are private address books because they are confined to persons
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007