Appeal No. 1998-1491 Page 19
Application No. 08/654,502
examiner fails to identify a sufficient suggestion to combine
any of the secondary references with Hofmann.
The teachings of Hofmann reveal that the circuitry of its
automatic telephone system operates as an integral unit to
transmit and receive data in a VHF range and a UHF range.
Translation, pp. 1-3. As explained in addressing the
rejections relying on Dinkins as the primary reference, the
examiner's conclusion that “it would have been obvious ... to
incorporate ... the communication circuit having a separate
housings in the communication device of Hofmann ... to make
the communication circuits separable," Examiner's Answer at
8), is circular. Also as explained in addressing the
rejections relying on Dinkins as the primary reference, his
reliance on Nerwin as a per se rule of obviousness, (id. at 8-
9), is legally incorrect.
Because the circuitry of Hofmann' automatic telephone
system 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
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