Ex parte GILLIG et al. - Page 10

          Appeal No. 1998-1491                                      Page 10           
          Application No. 08/654,502                                                  

               Although Bhagat, Sasaki, or Nonami each teach separate                 
          communication circuits contained in separate housings, the                  
          examiner fails to identify a sufficient suggestion to combine               
          any of the secondary references with Dinkins.  “‘[T]he                      
          question is whether there is something in the prior art as a                
          whole to suggest the desirability, and thus the obviousness,                
          of making the combination.’”  In re Beattie, 974 F.2d 1309,                 
          1311-12, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992) (quoting                     
          Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick                  
          Co., 730 F.2d 1452, 1462, 221 USPQ 481, 488 (Fed. Cir. 1984)).              

               Here, the teachings of Dinkins reveal that the circuitry               
          of its mobile subscriber unit operates as an integral unit to               
          relay data between a fixed cellular base station 10 and a                   
          remote handset 30.  Col. 3, l. 66 - col. 5. l. 40.  Rather                  
          than providing a line of reasoning to explain why combining                 
          Bhagat's, Sasaki's, or Nonami's teaching of using separate                  
          housings for separate circuits with Dinkins’ integral unit                  
          would have been desirable, the examiner merely concludes, “it               
          would have been obvious ... to incorporate the well known and               
          patriarchal use of ... the communication circuit having a                   

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