Ex Parte Ring - Page 10

                 Appeal 2007-0481                                                                                      
                 Application 10/654,049                                                                                

                 or modified does not render the resultant combination obvious unless the                              
                 prior art also suggests the desirability of the combination.”  In re Mills, 916                       
                 F.2d 680, 16 USPQ2d 1430 (Fed. Cir. 1990)” (Reply Br. 5: 17-19)(emphasis                              
                 original).  Appellant’s citation of Mills is inapposite.  The Examiner did not                        
                 make an argument as to whether Davis is capable of being modified in the                              
                 manner suggested by Naboulsi.  The Examiner pointed out that Davis                                    
                 explicitly allows for the use of different, known sensors, and cited Naboulsi                         
                 as teaching sensors made of carbon.                                                                   
                        Appellant argues that there is no teaching in either reference that                            
                 carbon sensors are well known to provide telephone operation (Reply Br. 5:                            
                 28-29).  The Examiner merely cited Naboulsi for the proposition that other                            
                 sensors, such as “carbon-type,” may be used to effect wireless telephone                              
                 operation in the same way that Davis’s capacitive sensors do.  Davis is the                           
                 reference relied upon to teach wireless telephone functions.  As such,                                
                 Naboulsi fairly suggests modifying Davis in order to arrive at the claimed                            
                 invention.                                                                                            
                        Finally, Appellant argues that the Examiner’s Answer still has not                             
                 provided a location in either reference for the claimed “spaced apart carbon                          
                 fiber strips” (Reply Br. 6: 7-9).  We disagree.  The Examiner’s Answer                                
                 makes clear that Naboulsi’s “carbon-type” transducers would replace the                               
                 capacitive sensors used in Davis, and would be used in the same place, on                             
                 either side of the telephone (see Fig. 3, elements 306 and 308).  We have                             
                 discussed supra the applicability of Naboulsi’s “carbon-type transducers” to                          
                 the claimed “carbon fiber strips.”                                                                    



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Last modified: September 9, 2013