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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