Morris cited in "missing element" obviousness case

from Ex parte Budde


With respect to the Examiner’s 35 U.S.C. § 103(a) rejection of
independent claim 1, Appellants argue (App. Br. 12-16; Reply Br. 2-4) that Kim does not disclose the claimed element in claim 1 of “wherein in
response to a user entering the desired device name in the mobile input unit and bringing the mobile input unit within the range, the desired device name is automatically transmitted from the mobile input unit to the device and the name memory of the device is overwritten with the desired device name” (hereinafter “disputed claim element”). Independent claims 9-11 recite similar subject matter.
The Examiner responds that Kim discloses a remote controller to change the name of a device. Ans. 12.

In the Reply Brief, Appellants argue that in

Kim, the name is changed in response to the user selecting a name from a displayed list, where the name selection is performed using a remote controller. That is, the remote controller is used to scroll through the displayed list of names and select a name. Once the name is selected, then the name of a device is changed.
Reply Br. 3.

According to Appellants’ Specification, the name of a device that is
stored in the name memory can be selected and/or changed. Spec. 2,
ll. 9-10. Also, if a user wishes to switch from one device to another device, he can select the new device by selecting its name from a list provided for the purpose. Spec. 7, ll. 2-5. Although this disclosure is not limiting of the claimed invention, it provides context for selecting the name of the device.

We agree with the Examiner’s explanation (Ans. 12) which finds that Kim’s selection of a name from a list of names meets the function of the disputed claim element because independent claim 1 does not preclude such a reading. See In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997).