Appeal No. 2000-1520
Application No. 08/768,715 Page 5
burden of presenting a prima facie case of obviousness. Note In
re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992). If that burden is met, the burden then shifts 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. 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).
We consider first the rejection of claims 1 and 8 based on
the teachings of Hirai and Figa. We begin with claim 1.
The examiner's position (answer, pages 3 and 7) is that
Hirai teaches a first in first out (FIFO) feature, but does not
teach the step of automatically registering the caller ID in the
memory according to a last in first out rule (LIFO). To make up
for this deficiency in Hirai, the examiner turns to Figa. The
examiner points out that Figa teaches both LIFO and FIFO, and
asserts (answer, page 7) that:
Since Figa presents the advantage of using both
features (last in/first out and first in/first out), it
would have been obvious to one of ordinary skill in the
art at the time the invention was made to adapt the
teachings of Figa et al. in order to easily, quickly
identify and obtain the caller ID of the most recent
caller in the shortest time.
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