Appeal No. 1997-1378
Application No. 08/065,328
are in agreement with Appellants’ stated position in the
Brief. The mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification. In re Fritch, 972 F. 2d
1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992). In the
present instance, we fail to see how Furuya’s system which is
designed to assure an empty channel of communication in a
cordless telephone system would have relevance to the
operation of the cell handover features of the prior art
wireless LAN network of Natarajan or the channel connection
system of Imaseki. None of the problems sought to be overcome
by Furuya would be expected to exist in the communication
systems of Natarajan or Imaseki. Further, the Examiner has
provided no indication as to how and in what manner the
disclosures of Natarajan and/or Imaseki would be modified with
the addition of Furuyama to arrive at the claimed invention.
In our view, the only reason on the record for the skilled
artisan to modify Natarajan or Imaseki in the manner suggested
by the Examiner would be through impermissible hindsight
reconstruction of Appellants’ invention.
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