Appeal No. 2004-0547
Application No. 09/536,894
We disagree with the examiner’s analysis. Independent claims 1 and 14 contain
limitations of “said selected one of said audio and video signals is automatically routed
through said base video unit to said caller without the need for human intervention.” We
concur with both the appellants and the examiner that Yamadera does not teach this
limitation. However, we find that this limitation is not broadly providing automatic means
to replace a manual activity accomplished the same result. Yamadera teaches that the
function of the secretary is to transfer the incoming calls to the person the calling party
intended to contact (see column 1, lines 25-34, see also col. 5, lines 36-42). We find
that the secretary performs this function by operating the secretary terminal (see column
5, lines 56-60). We find the secretary terminal is used to inform the executive terminal
user of an incoming call (see column 5, line 56), and to set up communications amongst
the executive terminal users (see column 6, lines 53 –62). Thus, we do not find that the
claim limitation of “signals is automatically routed through said base video unit to said
caller without the need for human intervention” is an automatic means to replace
manual activity such as discussed in In re Venner, as the automated step claimed does
not accomplish the same result as the manual step in Yamadera.
Further, we find that there is no express or implicit motivation to combine the
teachings of Yamadera and Lazik. It is the burden of the examiner to establish why one
having ordinary skill in the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by the implication contained
in such teachings or suggestions. In re Sernaker 702 F.2d 989, 995, 217 USPQ 1, 6
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