Ex parte GILLIG et al. - Page 11

                 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                                                                      

Page:  Previous  4  5  6  7  8  9  10  11  12  13  14  15  16  17  18  Next 

Last modified: November 3, 2007