Appeal No. 2000-1711
Application 08/808,870
We agree with appellants that Metroka does not teach or
suggest the limitations of claim 13. Limitations in the claim
cannot be ignored. Since Metroka does not send messages input by
a character display and selection control, it does not teach
encoding a message as a series of sounds. We also agree that
"could have" is not the test for obviousness. See In re Mills,
916 F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990) ("While
Mathis' apparatus may be capable of being modified to run the way
Mills' apparatus is claimed, there must be a suggestion or
motivation in the reference to do so."). The examiner has failed
to establish a prima facie case of obviousness. The rejection of
claims 13, 14, 26, and 27 is reversed.
CONCLUSION
The rejection of claims 1, 3-12, 15-25, 28, and 29 is
sustained. The rejection of claims 2, 13, 14, 26, and 27 is
reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
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