Appeal No. 2007-0151
Application No. 10/081,132
1598 (Fed. Cir. 1988). A prima facie case of obviousness is established
when the teachings of the prior art itself would appear to have suggested the
claimed subject matter to one of ordinary skill in the art. See In re Bell, 991
F.2d 781, 783, 26 USPQ2d 1529, 1531 (Fed. Cir. 1993); Uniroyal, Inc. v.
Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281,
293, 227 USPQ 657, 664 (Fed. Cir. 1985). In considering the question of
the obviousness of the claimed invention in view of the prior art relied upon,
the Examiner is expected to make the factual determination set forth in
Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467 (1966), and
to provide a reason why one having ordinary skill in the pertinent art would
have been led to modify the prior art or to combine prior art references to
arrive at the claimed invention. See also In re Rouffet, 149 F.3d 1350, 1355,
47 USPQ2d 1453, 1456 (Fed. Cir. 1998). Such evidence is required in order
to establish a prima facie case. In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984).
In determining the subject matter encompassed by claims 1 and 3, we
agree with the Examiner that the claim merely requires the enabled computer
terminal to access or participate in the performance of at least one network-
related function and voice communication. However, the claimed features
do not specify any particular function related to the network, nor may such
limitation be imported from the Specification into the claims. As such, we
remain unconvinced by Appellants’ arguments (Reply Br. 4) that the claim
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