                       Note: This disposition is nonprecedential.


 United States Court of Appeals for the Federal Circuit

                                        2007-1445
                                 (Serial No. 10/359,882)




              IN RE DAVID W. STAUFFER and JOSEPH P. HOFFBECK
                    (Real Party in Interest Stauf Enterprises, Inc.)


       Eli D. Eilbott, Duncan, Weinberg, Genzer & Pembroke, P.C., of Washington, DC,
for appellant. With him on the brief was Joshua E. Adrian.

      Stephen Walsh, Acting Solicitor, Office of the Solicitor, United States Patent and
Trademark Office, of Arlington, Virginia, for the Director of the United States Patent and
Trademark Office. With him on the brief were Shannon M. Hansen and Thomas W.
Krause, Associate Solicitors.

Appealed from: United States Patent and Trademark Office
               Board of Patent Appeals and Interferences
                       NOTE: This disposition is nonprecedential.

 United States Court of Appeals for the Federal Circuit
                                        2007-1445
                                 (Serial No. 10/359,882)



               IN RE DAVID W. STAUFFER and JOSEPH P. HOFFBECK
                     (Real Party in Interest Stauf Enterprises, Inc.)


Appeal from the United States Patent and Trademark Office, Board of Patent Appeals
and Interferences.

                            __________________________

                               DECIDED: July 24, 2008
                            __________________________



Before SCHALL and PROST, Circuit Judges, and WARD, * District Judge.

WARD, District Judge.

       David W. Stauffer and Joseph P. Hoffbeck (collectively “SEI” 1 ) appeal a decision

of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and

Interferences (“Board”), which rejected all claims in SEI’s non-provisional patent

application.   The Board affirmed the examiner’s rejection of SEI’s application as

obvious under 35 U.S.C. § 103 in light of certain prior art references. In re Stauffer, No.

2006-2679 (B.P.A.I. Mar. 30, 2007). For the reasons explained below, we affirm the

Board’s decision.


       *
             Honorable T. John Ward, District Judge, United States District Court for
the Eastern District of Texas, sitting by designation.
      1
             The two inventors named on the application, David W. Stauffer and
Joseph P. Hoffbeck assigned all right, title, and interest to Stauffer Enterprises, Inc.
                                           I. BACKGROUND

       The patent application at issue is application serial number 10/359,882 (the “’882

Application”).     The ’882 Application relates generally to a device for printing caller ID

information associated with a telephone call without user intervention. The caller ID

information typically includes date and time information for a given telephone call.

Caller ID information may also include other information, such as a telephone number

and/or a party’s name. SEI states that its invention is an improvement over the prior art

because the message taker need not write the call time, date, telephone number, and

calling party’s name for each message. The message taker may use the printed call

records to record relevant message information easily and quickly.

       The examiner rejected claims 1-14 of the ’882 Application as obvious over United

States Patent No. 6,125,170 (“Sawaya”) and United States Patent Pub. No.

2003/0126016-A1 (“Asano”). Additionally, the examiner rejected claims 15-16 of the

’882 Application as being unpatentable under 35 U.S.C. § 103(a) over Sawaya, Asano,

and United States Patent No. 4,747,133 (“Valenzona”).

       SEI appealed the examiner’s rejection to the Board. Two Board decisions are

relevant to this case.      The first is the Decision on Appeal entered on September 25,

2006 (“Stauffer I”). The second is the Decision on Request for Rehearing, entered on

March 30, 2007 (“Stauffer II”).        Stauffer I affirmed the examiner’s final rejection of

claims 1-14 of the ’882 Application under 35 U.S.C. § 103(a) as unpatentable over

Sawaya and Asano and affirmed the examiner’s final rejection of claims 15-16 of the

’882 Application under 35 U.S.C. § 103(a) as obvious over Sawaya, Asano, and

Valenzona.       In Stauffer II, the Board declined to modify Stauffer I.



2007-1445                                       2
       SEI asks the Court to reverse the Board’s decisions and directs the Board to

allow the claims in the ’882 Application.          SEI directed its argument solely to

representative claim 1 in this appeal. The claim provides:

       1. A caller ID printing device, comprising:
             a controller configured to detect caller ID information from an
             incoming call; and
             a printer configured to automatically print the caller ID information;
             and
             a message template onto a call record immediately after the first
             receipt of a first ring signal and without user intervention

We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).

                                     II. DISCUSSION

       SEI bears the burden of showing that the Board committed reversible error. See

In re Caveney, 761 F.2d 671, 674 (Fed. Cir. 1985). Obviousness is a legal question

based on underlying factual findings. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.

2000). Factual determinations include, inter alia, the scope and content of the prior art,

the level of skill in the art at the time of the invention, the objective evidence of

nonobviousness, the presence or absence of a motivation to combine, and whether a

reference constitutes analogous prior art. See In re Biggio, 381 F.3d 1320, 1324 (Fed.

Cir. 2004); Gartside, 203 F.3d at 1316; Para-Ordinance Mfg. v. SGS Imps. Int’l., 73 F.3d

1085, 1088 (Fed. Cir. 1995); In re GPAC, Inc., 57 F.3d 1573, 1577 (Fed. Cir. 1995).

“What the prior art teaches and whether it teaches toward or away from the claimed

invention also is a determination of fact.” Para Ordinance Mfg., 73 F.3d at 1088 (citing

In re Bell, 991 F.2d 781, 784 (Fed. Cir. 1993)).

       This court reviews the Board’s underlying factual findings for substantial

evidence, and the Board’s legal determination without deference. Gartside, 203 F.3d at


2007-1445                                    3
1316.    Substantial evidence is evidence that “a reasonable mind might accept as

adequate to support a conclusion.” Id. at 1312. “[W]here two different inconsistent

conclusions may reasonably be drawn from evidence in the record, an agency’s

decision to favor one conclusion over the other is the epitome of a decision that must be

sustained upon review for substantial evidence.” In re Jolley, 308 F.3d 1317, 1329

(Fed. Cir. 2002). This court will not determine that a decision made by the Board is

unsupported “simply because the Board chose one conclusion over another plausible

alternative.” Id. at 1320.

        On appeal, SEI challenges the Board’s holding only as it relates to the

obviousness of representative claim 1 in light of the Sawaya and Asano prior art

references. SEI makes four arguments for reversing the Board’s decisions. First, SEI

contends that the Board’s conclusion regarding Sawaya’s teaching was incorrect.

Second, SEI argues that Sawaya discloses the automatic printing of caller ID

information only in general terms. Third, SEI argues that the Board failed to identify the

motivation to combine Sawaya and Asano. Finally, SEI maintains that the Board failed

to identify what constitutes ordinary skill in the art.

        In response, the government argues that the ’882 Application attempts to claim a

device that detects caller ID information from a telephone line and automatically prints

the information with a message template immediately after the first ring without user

intervention. The government states that representative claim 1 does not specify the

particular information that is identified as caller ID information and that is printed by the

device. Further, the government argues that claim 1 does not specifically identify the

time period in which the caller ID information must be printed.              Moreover, the




2007-1445                                       4
government states that claim 1 does not prevent a user from adding additional

information to the message template.

       The government argues that Sawaya discloses a device that detects caller ID

information from a telephone line and automatically prints the information with a

template without user intervention. The government further states that Asano teaches

that caller ID information is typically transmitted between the first and second rings of a

telephone—a fact also stated in the ’882 Application. For these reasons, the Board

concluded that one of ordinary skill in the art would know that caller ID information is

typically transmitted at this time and would be motivated to modify the device taught in

Sawaya to print the caller ID information immediately after the first ring signal so that it

would operate more quickly. The government thus contends that Sawaya and Asano

together disclose all elements of representative claim 1 of the ’882 Application and that

one of ordinary skill in the art would have found it obvious to combine those elements.

       Before addressing the parties’ arguments, the court first examines Sawaya

because that reference is central to the Board’s decision.          Sawaya states “[t]he

invention relates generally to message preparation and distribution and, more

particularly, to devices and methods of use which expedite the process of completing

message slips with known and new information.” The summary of the invention section

further notes that “[t]he present invention resides in a message storage and retrieval

system wherein visual indicia representative of a message slip is automatically

generated with known information and wherein new information may be readily entered

and stored in registered alignment with the slip containing the known information.”

Further, “[b]roadly, the invention automates the task of generating message slips of the




2007-1445                                    5
type prepared by a receptionist, by gathering known information such as time and date,

while automating and digitizing the entry of new information which is typically of a more

custom nature.”

       Importantly, with respect to caller ID information, Sawaya discloses that “caller-ID

capabilities may be provided, in which case the designation of the calling party and/or

the number of the calling party may become known and pre-printed and/or stored.”

       This court will now address the applicants’ arguments. The arguments overlap to

a certain extent, and may be considered with reference to representative claim 1 by

examining the claim on an element by element basis.

       A. A controller configured to detect caller ID information from an incoming call

       SEI faults the Board’s decision by stating that it mistakenly identified the “caller

ID” information disclosed in Sawaya.       Specifically, SEI characterizes the caller ID

information disclosed by Sawaya to be “time and date from a ‘clock and calendar

module.’” SEI Br. at 28. SEI argues that the date and time information in Sawaya is not

the date and time information transmitted in the caller ID signal. Instead, SEI argues

that the date and time information in Sawaya comes from “clock and timer circuitry

operative to generate an electrical signal indicative of the date and time such that upon

request or need for each new message slip, such information will automatically be

generated onto the paper prior to being fed over the graphics pad to receive new

information in graphical form.”

       SEI’s argument ignores a different passage from Sawaya that states “[t]he

telephone interface also preferably includes [sic] further includes a caller-identification

(caller-ID) capability, and the controller is further, capable of storing into the memory,




2007-1445                                   6
and printing onto the slip, additional known information relating to the incoming call,

including the telephone number associated with the incoming call.”       SEI seeks to limit

the definition of caller ID information to call time and date, but provides no justification

for limiting the claim term only to only those components. In fact, in its briefing, SEI

cites two patents which state that caller ID information is a party’s telephone number

and/or identity. SEI Br. at 30 n. 14. The Board did not err when it found that Sawaya

teaches this element.

       B. A printer configured to automatically print the caller ID information

       SEI argues that the Board erred in finding that Sawaya teaches the “automatic”

feature in this limitation. The thrust of SEI’s position is that Sawaya used “automatic” to

mean “printing that occurs only after the receptionist first establishes the ‘request or

need’ for a new message slip.” SEI Br. at 25. SEI argues that the receptionist’s request

or need is a condition precedent to “automatically” printing the caller ID information.

       Language from Sawaya refutes SEI’s position. The following passages plainly

suggest that the receptionist’s request or need is not a condition precedent for

“automatically” printing the caller ID information:

       The present invention resides in a message storage and retrieval system,
       wherein visual indicia representative of a message slip is automatically
       generated with known information and wherein new information may be
       readily entered and stored in registered alignment with the slip containing
       the known information.        In one embodiment, the visual indicia
       representative of a message slip is generated by actually printing a paper
       slip, which may be prepared before or after the entry of the new
       information. In an alternative embodiment, the visual indicia is generated
       in electronic form.

       Broadly, the invention automates the task of generating message slips of
       the type prepared by a receptionist, by gathering known information such
       as time and date, while automating and digitizing the entry of new
       information which is typically of a more custom nature.



2007-1445                                     7
       In its most basic form, the invention includes clock and timer circuitry
       operative to generate an electrical signal indicative of the date and time,
       such that upon the request or need for each new message slip, such
       information will automatically be generated onto the paper prior to being
       fed over the graphics pad to receive the new information in graphical form.
       As discussed in further detail below, the advancement of the paper to
       create a new message slip may be brought about either through the entry
       of a user command such as depression of a push-button such as 112, or,
       the unit may be coupled to a telephone line 120 through a connection 122
       and include circuitry operative to automatically advance the paper supply
       upon receipt of each incoming telephone call.

       SEI claims that the Board erred because Sawaya does not disclose a printer

configured to “automatically print the caller ID information” due to the “upon request or

need” language referenced above. However, the relevant claim language from the ’882

Application (“automatically . . . information”) treats only the printing as “automatic,” not

the generation of the caller ID information. Using SEI’s view of the Sawaya language,

once a user enters a signal (request or indicative of a need), then the printer

automatically prints the caller ID information.

       Additionally, SEI states that Sawaya is directed at automating only the note

taking process, while the ’882 Application is directed to automating everything. But the

’882 Application only claims automating the printing process, which is disclosed by

Sawaya even under SEI’s limited reading of Sawaya.

       The final issue with respect to this limitation is SEI’s position that Sawaya lacks

the requisite specificity to render the invention in the ’882 Application obvious.

Effectively, SEI argues that Sawaya is not enabled with respect to “automatic” and,

therefore, cannot render the ’882 Application obvious.       Specifically, SEI states that

“Sawaya includes no disclosure, in the form of a drawing, written description, or

otherwise, that teaches, discloses, or suggests to one of ordinary skill in the art how to




2007-1445                                    8
obtain, decode and automatically print caller ID information.” SEI Br. at 35. This is not

correct.

       Sawaya discloses the methods for obtaining and printing the caller ID

information. For example, in column 2, Sawaya teaches using a telephone interface

with caller ID capability.    Further, Figure 2 of Sawaya shows a block diagram of the

various components, including a telephone interface.

       The ’882 Application does not claim a method or apparatus for decoding caller ID

information. In fact, the ’882 Application teaches using a “caller-ID decoder program”

but never teaches the method for decoding caller-ID information. SEI’s disclosure of

decoding caller ID information is effectively identical to Sawaya, which teaches using a

telephone interface with caller ID capability.

       The Board did not err by finding that Sawaya teaches this limitation.

       C. immediately after receipt of a first ring signal

       Asano is directed to a slightly different invention than the ’882 Application and

Sawaya. Asano focuses on a computer network suited for receiving and processing

orders electronically.       Generally, however, this field of invention encompasses

telecommunications networks, which is a field related to that of the ’882 Application.

       Paragraph 46 of Asano states that caller ID information is transmitted between

the first and second ring signals. The ’882 Application discloses the same information:

“[c]aller ID information is typically sent over the phone line between the first and second

rings of an incoming call.” The Board combined Asano and Sawaya to reach its

determination of obviousness. However, the only information disclosed in Asano that

the Board combined with Sawaya was that caller ID information is transmitted between




2007-1445                                     9
the first and second rings.     SEI objects to combining Asano with Sawaya, but its

objection unduly limits the circumstances under which it is proper to combine references

in a manner that is contrary to precedent.

       “The motivation need not be found in references sought to be combined, but may

be found in any number of sources, including common knowledge, the prior art as a

whole, or the nature of the problem itself.”          Dystar Textlifarben GmbH & Co.

Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361 (Fed. Cir. 2006). “There is

no requirement that the prior art contain an express suggestion to combine known

elements to achieve the claimed invention. Rather, the suggestion to combine may

come from the prior art, as filtered through the knowledge of one skilled in the art.”

Motorola, Inc. v. Interdigital Tech. Corp., 121 F.3d 1461, 1472 (Fed. Cir. 1997).

Moreover, “[i]n addition to the reference we also look at the admitted state of the art

found in appellants’ specification.” In re Davis, 305 F.2d 501, 503 (C.C.P.A. 1962).

       With respect to the “immediately” term, the government argues that a person of

ordinary skill would have been motivated to print the information more quickly. We

agree with the Board in light of the case law stating that one may combine references to

create a product that is more desirable because it is “faster . . . or more efficient.” See

Dystar, 464 F.3d. at 1356; see also Sandt Tech., Ltd. v. Resco Metal & Plastics Corp.,

264 F.3d 1344, 1355 (Fed. Cir. 2001). In light of these precedents, the Board did not

err with respect to its combination of Asano and Sawaya.

       D. without user intervention

       For the reasons discussed in connection with the “automatic” limitation, the

Board did not err in its analysis of the “without user intervention” requirement.




2007-1445                                    10
         In addition to SEI’s arguments previously addressed, SEI argues that the Board

did not specifically identify the background of one of ordinary skill in the art.

Procedurally, SEI raised this issue for the first time on appeal.

         On appeal to this Court, ‘we have before us a comprehensive record that
         contains the arguments and evidence presented by the parties’ and our
         review of the Board’s decision is confined to the ‘four corners’ of that
         record. Just as it is important that the PTO in general be barred from
         raising new arguments on appeal to justify or support a decision of the
         Board, it is important that the applicant challenging a decision not be
         permitted to raise arguments on appeal that were not presented to the
         Board.

In re Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004)(citing In re Gartside, 203 F.3d at

1314).

         SEI, therefore, waived this argument. The Board correctly determined that one

of ordinary skill would know the timing of the transmission of caller ID information.

                                     III. CONCLUSION

         For the reasons assigned in this opinion, we affirm the Board’s decision.




2007-1445                                    11
