Appeal No. 98-3299
Application 08/335,331
claims 2 and 3 contain the same limitations as claim 1, their2 3
rejection under the same ground is also reversed.
With respect to the rejection of claims 4 and 9 through
93 under 35 U.S.C. § 103, 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)
2We note that, in actuality, claims 2 and 3 depend on
claims 9 and 19 respectively, which in turn are later rejected
in the final rejection under 35 U.S.C. § 103, thereby making
their rejection here under 35 U.S.C. § 102 improper. However,
no other prior art is applied in the later rejection and the
discussion under § 103 in this instance does not add any
further substance to the § 102 rejection.
3Same as footnote 2.
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