Ex parte BREDERVELD et al. - Page 7




                 Appeal No. 1997-1378                                                                                                                   
                 Application No. 08/065,328                                                                                                             


                 the proposed combination of Natarajan and Imaseki to establish                                                                         
                 a prima facie case of obviousness.  After considering the                                                                              
                 arguments of record, we initially agree with Appellants that,                                                                          
                 since Natarajan has an existing signal quality determination                                                                           
                 feature in place, the need for such a feature as taught by                                                                             
                 Imaseki is obviated.                                                                                                                   
                          On further review and analysis of the language of                                                                             
                 representative claim 1, however, we find Imaseki’s selective                                                                           
                 channel communication teachings to be cumulative to that of                                                                            
                 Natarajan.  Further, it is our view that the Figure 5                                                                                  
                 illustration and accompanying description in Natarajan                                                                                 
                 discloses all of the recited method steps of representative                                                                            
                 claim 1.  We note that the relevant portion of claim 1, to                                                                             
                 which Appellants’                                                                                                                      


                 arguments are particularly directed, recites:2                                                                                         
                                   determining if the communications quality value                                                                      
                                   becomes unacceptable, and if so, changing the                                                                        
                                   operating mode of the mobile station to a search                                                                     
                                   operating mode wherein beacon messages received                                                                      
                                   from any of the base stations are monitored; ...                                                                     

                          2Similar recitations appear in claims 9 and 19, the other                                                                     
                 independent claims on appeal.                                                                                                          
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