Ex parte GILLIG et al. - Page 17




          Appeal No. 1998-1491                                      Page 17           
          Application No. 08/654,502                                                  


                            Rejections Relying on Hofmann                             
               Although Hofmann teaches first and second communications               
          circuits that provide two-way communication, Translation, p. 2              
          ("two radio sub-systems"), the examiner admits that the                     
          primary reference "does not disclose that each of the                       
          communication circuit having [sic] a separate housings."                    
          (Examiner's Answer at 8.)     To the contrary, "[t]he basic                 
          concept of the invention is to combine two sub-systems? [sic]               
          in the automatic telephone system."  Translation, p. 2.  Faced              
          with this defect, the examiner makes the following allegation.              


               [I]t would have been obvious ... to incorporate the                    
               well known and patriarchal use of each of the                          
               communication circuit having a separate housings in                    
               the communication device of Hofmann in order to make                   
               the communication circuits separable.  It has been                     
               held that constructing a formerly integral structure                   
               in various elements involves only routine skill in                     
               the art.  Nerwin v. Erlichman, 168 USPQ 177, 179.                      
          (Examiner's Answer at 8-9.)                                                 


               The appellants reply, "Hofmann lacks any motivation to                 
          separate any components of the radio device among first and                 









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