Appeal No. 95-4151
Application 08/158,342
particularity. Therefore, we will not sustain the rejection
on the basis of 35 U.S.C. 112 second paragraph.
In regard to the 35 U.S.C. § 103 rejection, the Examiner
has failed to set forth a prima facie case. It is the burden
of the Examiner to establish why one having ordinary skill in
the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by
implications contained in such teachings or suggestions. In
re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
"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), cert. denied, 117 S.Ct. 80 (1996)
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).
The Examiner states on page 3 of the answer that Wright
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