Ex Parte FUNK et al - Page 5



          Appeal No. 2000-1593                                                         
          Application 08/724,459                                                       

          With respect to independent claims 1 and 8, the examiner                     
          finds that Suomi teaches the claimed invention except that Suomi             
          uses an RS232 interface rather than a PCMCIA slot as claimed.                
          The examiner cites Gradeler as teaching that a PCMCIA slot is a              
          standard connection for small computers.  The examiner finds that            
          it would have been obvious to the artisan to replace the RS232               
          interface in Suomi with a PCMCIA slot as taught by Gradeler in               
          order to provide an interface that allows for connection to most             
          small computers [answer, pages 3-4].                                         
          Appellants make the same arguments with respect to claims                    
          1 and 8.  Specifically, appellants argue that even if it would               
          have been obvious to the artisan to replace the RS232 connection             
          of Suomi with a PCMCIA connection as urged by the examiner, the              
          invention of claims 1 and 8 does not result because the claims               
          call for the radio receiver to be received within the PCMCIA                 
          slot.  Appellants argue that the artisan would not be motivated              
          to change the partitioning of Gradeler such that the PC Card                 
          includes only a radio instead of the combination of radio and                
          modem.  Appellants also argue that the examiner’s proposed                   
          modification of the prior art selectively uses teachings of the              
          references based on appellants’ own disclosure [brief, pages 5-              
          6].                                                                          
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