Appeal No. 1998-1491 Page 11
Application No. 08/654,502
separate housings in the communication device of Dinkins ...
to make the communication circuits separable." (Examiner's
Answer at 4-5.) Rather than being persuasive, such a
conclusion is circular.
The examiner also attempts to circumvent the requirement
to show desirability by relying on Nerwin as a per se rule of
obviousness. (Id. at 5.) Such “reliance on per se rules of
obviousness is legally incorrect and must cease. Any such
administrative convenience is simply inconsistent with
section 103 ....” In re Ochiai, 71 F.3d 1565, 1570, 37 USPQ2d
1127, 1132 (Fed. Cir. 1995).
Because the circuitry of Dinkins' mobile subscriber unit
operates as an integral unit, we are not persuaded that the
prior art would have suggested the desirability, and thus the
obviousness, of combining either Bhagat, Sasaki, or Nonami
teaching of using separate housings with either Dinkins’
teaching of a mobile subscriber unit. The examiner’s 2
2Although Bhagat, Sasaki, and Nonami each teach separate
(continued...)
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