Appeal No. 96-0418
Application 08/051,321
Examiner's answer for their respective positions.
OPINION
We have carefully considered the entire record before us,
and we will reverse the obviousness rejection of claims 1, 9
through 11, 15, 16, 19 and 21.
The Examiner has failed to set forth a prima facie case
of obviousness. 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 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 Importer 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).
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007