Appeal No. 2003-0506 Page 7
Application No. 09/264,766
information such as radio channel frequency. . . ." Col. 10, ll. 13-16. We find that the
indication of a long message constitutes an indication of a pending message.
B. COMBINATION OF DENT AND AYERST
The examiner finds, "[i]t would have been obvious to modify Dent with Ayerst,
such that the second channel is identified with an indication of the pending message via
the first channel, in order to conserve the power of the user terminal." (Final Rejection1
at 3.) The appellants argue, "there is no suggestion in Dent or Ayerst that would
motivate one skilled in the art to combine their relevant teachings" (Appeal Br. at 8.)
"The presence or absence of a motivation to combine references in an
obviousness determination is a pure question of fact." In re Gartside, 203 F3d 1305,
1316, 53 USPQ2d 1769, 1776 (Fed. Cir. 2000) (citing In re Dembiczak, 175 F.3d 994,
1000, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). "'[T]he question is whether there is
something in the prior art as a whole to suggest the desirability, and thus the
obviousness, of making the combination.'" In re Beattie, 974 F.2d 1309, 1311-12, 24
USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting Lindemann Maschinenfabrik GMBH v.
1"We advise the examiner to copy his rejections into his examiner’s answers," Ex
parte Metcalf, 67 USPQ2d 1633, 1635 (Bd.Pat.App. & Int. 2003), rather than merely
referring to a "rejection . . . set forth in prior Office Action. . . ." (Examiner’s Answer
at 3.)
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