Appeal 2006-2679
Application 10/359,882
Techs., Inc. v. Opticon, Inc., 935 F.2d 1569, 1578, 19 USPQ2d 1241, 1247
(Fed. Cir. 1991).
Even assuming that enablement is required in this case, we refer to
claim 3 of Sawaya, claiming a caller-identification capability, and printing
onto a slip additional known information relating to the incoming call,
including the telephone number associated with the incoming call. The
telephone number associated with an incoming call is caller ID information -
- see instant claim 9.1
The reference (Sawaya) is a U.S. patent. A patent shall be presumed
valid. 35 U.S.C. § 282. Absent clear evidence adduced by Appellants in
support of the allegation of non-enablement, we find the mere allegation to
be unpersuasive.
We agree with Appellants’ remarks at pages 4 through 6 of the
Request to the extent that Sawaya describes some embodiments in which
call records are not “automatically” printed. However, we hold to our view
that the reference supports the Examiner’s finding that Sawaya also
describes printing of caller ID information automatically, without user
intervention (e.g., col. 3, l. 35 - col. 4, l. 5).
Finally, Appellants’ further remarks in the Request allege that Sawaya
fails to disclose automatically printing information after a first ring signal.
The Examiner agrees; Appellants’ remarks are directed to an issue not in
controversy. To the extent the remarks might be intended as responsive to
the § 103 rejection for obviousness over Sawaya and Asano, we disagree
1 We also observe that intervening claim 2 of Sawaya claims advancement of
a message slip “upon receipt of an incoming telephone call.”
3
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Last modified: September 9, 2013