Appeal No. 2000-1556
Application No. 08/771,426
admitted prior art generally discusses the availability of
different hyperbands that merely “presents an opportunity for
cellular telephone switches to control overlapping or adjacent
cells in different hyperbands” (specification, pages 5 & 6).
Therefore, the admitted prior art provides no teaching related to
programming the mobile station with hyperband selection criteria
or operating Leung’s microcell and macrocell systems on different
hyperbands for the mobile station to move between cells and
between different hyperbands.
As the Federal Circuit states, "[t]he 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), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). The court further reasons in Karsten Mfg.
Corp. v. Cleveland Gulf Co., 242 F.3d 1376, 1385, 58 USPQ2d 1286,
1293 (Fed. Cir. 2001) that for an invention to be obvious in view
of a combination of references, there must be some suggestion,
motivation, or teaching in the prior art that would have led a
person of ordinary skill in the art to select the references and
combine them in the way that would produce the claimed invention.
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