Appeal No. 2001-2050
Application No. 08/997,085
OPINION
We have carefully considered the entire record before us, and we will reverse the
obviousness rejection of claims 1 through 32.
The examiner acknowledges (supplemental answer, page 3) that “Nepustil differs from the
claimed invention in that the holding party records a message at the network node instead of
selecting a pre-recorded message at the network node for delivering to the hold initiating party.”
According to the examiner (supplemental answer, page 4):
Wolff discloses a method wherein a called party can select either a new message or a
message among several pre-recorded messages stored at a network node (PTM) for
delivering to a calling party, wherein the step of selecting a pre-recorded message
would read on selecting a ‘selection identifier’ (see Wolff, Fig. 1, col. 5, lines 57-
60), and wherein it would have been obvious to one of ordinary skill in the art that a
telephone could be used in place of the palm-top computer for performing such
simple selection operation (see Wolff, col. 7, lines 26-28). Therefore, it would have
been obvious to one of ordinary skill in the art at the time the invention was made to
modify and combine the above teachings of Nepustil and Wolff for providing a hold
termination method as claimed, for allowing a holding party to quickly and
conveniently leaving a frequently used message (see Wolff, col. 6, lines 41-45) to a
hold initiating party so that the holding party could be better-spent doing other
things.
Appellants argue (brief, page 8) that:
Wolff’s disclosure runs contrary to the claimed subject matter on this appeal.
Each of the independent claims state that a network node receives a hold termination
signal from a holding party. The claims further state that, in response to the hold
termination signal, the network node transmits a message to a hold initiating party.
Wolff, in contrast, does not disclose any hold termination signal being received from
a holding party (Wolff’s calling party). Wolff also fails to disclose transmitting a
pre-recorded message to a hold initiating party (Wolff’s called party) in response to a
hold termination signal. Additionally, Wolff does not disclose a selection identifier
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