Appeal No. 1999-1515
Application No. 08/451,719
the arguments of record, we are in agreement with Appellants’
position as stated in the Briefs. Our interpretation of the
Goeken ‘766 reference coincides with that of Appellants’,
i.e., there is no transfer or “hand-off” of communication
from one base station to another. Contrary to the Examiner’s
assertion, Goeken ‘766 selects a base station, from among a
plurality of base stations, which will provide the best
service over a predetermined maximum length telephone
conversation, thereby permitting completion of a call with a
single base station without “hand-off” (Goeken ‘766, column 9,
lines 9-19).
Given this disclosure of Goeken ‘766, it is unclear as to
how and what manner this reference would be modified to arrive
at the claimed invention. The mere fact that the prior art
may be modified in the manner suggested by the Examiner does
not make the modification obvious unless the prior art
suggested the desirability of the modification. In re Fritch,
972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed.
Cir. 1992). None of the problems sought to be overcome by the
applied secondary references to Goeken ‘303 or Patsiokas would
be expected to exist in Goeken ‘766. Each of these references
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