Appeal No. 2001-1644
Application No. 08/951,149
OPINION
The examiner finds that Roadmap discloses all the claimed invention but for “an
indicating light being positioned in the opening of [the] knuckle and a display in the
second housing.” (Answer at 3.) The examiner concludes that it would have been
obvious to locate an indicating light in the claimed location “since it has been held that
rearranging essential [sic; nonessential?] parts of an invention involves only routine skill
in the art,” citing “In re Japikse, 86 USPQ 70.” (Id. at 4.)
In appellants’ view, In re Japikse does not apply. Appellants assert that the
indicator light taught by Roadmap can only be viewed by orienting the device so that
the back of the device is in view. By centering the indicator in the hinge, operation of
the handset would be modified because the handset would not have to be turned to be
oriented so that the back of the device is in view. (Brief at 5.) The examiner counters
(Answer at 4) that the rearrangement of the indicator device does not modify operation
of the communication device because the device would receive or send a call
regardless of the location of the indicator.
We cannot discern the precise location of the status indicator light in the
Roadmap reference. The reference at page 4, however, states that the indicator light is
an LED “on the back of the phone [and] indicates whether the phone is on, in a service
area, roaming, or receiving a call.”
In place of a teaching from the prior art to modify the Roadmap phone, the
instant rejection relies on a per se rule of obviousness. Our reviewing court looks with
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