Appeal 2006-2679
Application 10/359,882
OPINION
Appellants contend in the Request that we erred in our conclusion that
the subject matter as a whole of representative claim 1 was prima facie
obvious over Sawaya (U.S. 6,125,170) and Asano (US 2003/0126016 A1).
Appellants argue (Request 2-3) that Sawaya receives time and date
information relating to a telephone call from clock and timer circuitry, rather
than from a caller ID signal from a telephone line. Appellants’ arguments
seem to presume that the “caller ID information” of claim 1 requires that
time and date information be detected from an incoming call. We disagree
with the implicit presumption, as the claim does not specify the caller ID
information that is detected. Our reviewing court has repeatedly warned
against confining the claims to specific embodiments described in the
specification. Phillips v. AWH Corp., 415 F.3d 1303, 1323, 75 USPQ2d
1321, 1334 (Fed. Cir. 2005) (en banc). Moreover, narrower (depending)
claim 9 recites that the caller ID information includes one or more of an
incoming call time, an incoming call date, a calling party telephone number,
and a calling party name.
In any event, Appellants also contend that Sawaya’s description of a
message system that prints the name and phone number of the caller, as
conveyed by caller ID, is not sufficient to enable the requisite telephone
interface. Sawaya describes caller ID capabilities (col. 3, ll. 52-59) and
printing the information along with a message template (col. 4, ll. 1-5).
While a reference must enable someone to practice the invention in
order to anticipate under § 102, a non-enabling reference may qualify as
prior art for the purpose of determining obviousness under § 103. Symbol
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Last modified: September 9, 2013