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Ex parte SHINBASHI et al. - Page 6
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Board of Patent Appeals and Interferences > 1997 > Ex parte SHINBASHI et al. - Page 6
Appeal No. 95-3710
Application 07/621,005
"Additionally, when determining obviousness, the claimed
invention should be considered as a whole; there is no legally
recognizable 'heart' of the invention." Para-Ordnance Mfg. v.
SGS Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1239 (Fed. Cir. 1995), citing W. L. Gore & Assocs., Inc. v.
Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir.
1983), cert. denied, 469 U.S. 851 (1984).
Appellants argue on pages 6-7 of the brief and pages 2-3 of
the reply brief that the Examiner has failed to show that the
prior art would have suggested to those skilled in the art to
modify the structures illustrated in Figures 2 and 3 to obtain a
switching system as recited in Appellants' claims. Appellants
point out that the Examiner has only provided conjecture after
reading Appellants' specification of what one of ordinary skill
in the art would have found obvious. Appellants argue the
Examiner is relying upon personal interpretation of what the
Examiner considers to be obvious without having submitted any
evidence such as a teaching in the prior art or an Affidavit
setting forth the Examiner's experience and knowledge as of the
effective filing date.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
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Last modified: November 3, 2007
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