Appeal No. 1999-0876
Application No. 08/693,494
No. 96-1258 (Fed. Cir. August 2, 2001). Thus, we will not
accept as motivation for modifying Connolly bald assertions
with no evidence to support them.
Further, regarding the obviousness of "rearranging parts
of an invention," Connolly generates the second random number
at the handset because it is the handset which is being
authenticated. Changing the generation of the second random
number to the base station would not merely be a rearrangement
of parts, but, rather, would destroy the operation of
Connolly's system. The Federal Circuit has held that "a
proposed modification [is] inappropriate for an obviousness
inquiry when the modification render[s] the prior art
reference inoperable for its intended purpose. In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984)." In
re Fritch, 972 F.2d 1260, 1265-1266 n.12, 23 USPQ2d 1780, 1783
n.12 (Fed. Cir. 1992). Therefore, as we cannot accept either
of the examiner's reasons for modifying Connolly, the examiner
has failed to establish a prima facie case of obviousness.
Consequently, we cannot sustain the obviousness rejection of
claims 3, 5, 8, 9, 14, and 18 through 20.
CONCLUSION
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