Ex Parte MANNING et al - Page 11




          Appeal No. 2001-2270                                                        
          Application 09/235,529                                                      

          chip shown in Fig. 9 (RBr8).  It is argued that the examiner has            
          not cited a reference in which any dialing signals that are                 
          attenuated by more than 30 dB are detected by any type of                   
          detection device (RBr9).                                                    
               While the power to the central office may be attenuated by             
          30 dB, as shown in appellants' sketch at RBr6, it does not appear           
          that the voltage across the parallel attenuator is changed.                 
          Therefore, appellants have not shown that a special voltage                 
          detector is required or that one of ordinary skill in the art               
          would not know how to detect the DTMF signals without undue                 
          experimentation.  Moreover, it does not appear from appellants'             
          disclosure that the invention is the circuitry for detecting an             
          attenuated signal.  No special detection circuitry is claimed.              
               Appellants argue that the references cannot be readily                 
          combined without the inventive modifications as recognized by the           
          applicants, nor is there any indication in the reference that               
          they should be combined (RBr8).                                             
               "[T]he test [for obviousness] is what the combined teachings           
          of the references would have suggested to those of ordinary skill           
          in the art."  In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881            
          (CCPA 1981).  While Eaton does not expressly say that a parallel            
          attenuator should attenuate by 30 dB, one of ordinary skill in              
          the art would readily appreciate that the 30 dB attenuation                 
          between the telephone and central office for a serial device in             

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