Appeal No. 2004-1952
Application No. 09/207,954
the potential customer would, in fact, become a customer. The
[examiner] has seemingly implied that saying no to the operator
while a friend or a family member is on the line might be
difficult, but there is no evidence of any ‘peer pressure’ when
the potential customer is simply saying ‘no’ to a machine instead
of a person” (principal brief, page 6).
In addition to the arguments supra, with regard to claims
36, 37, and 46, appellants argue that the examiner has not
identified anything to show that a calling card number would be
useful in the context of delivering, by a server, a marketing
message during a teleconference.
We agree with appellants and will not sustain the rejection
of claims 35-37, 45, and 46 under 35 U.S.C. § 103.
Initially, we note that the patent to Riddle appears to form
a considerable part of the examiner’s rejection, yet the
statement of rejection mentions only Mendler. Where a reference
is relied on to support a rejection, whether or not in a minor
capacity, there would appear to be no excuse for not positively
including the reference in the statement of the rejection. In re
Hoch, 428 F.2d 1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970).
This, alone, would be reason enough to reverse the stated
rejection. However, since appellants clearly know that Riddle is
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