Appeal No. 1996-4118
Application 08/ 084,255
OPINION
We will not sustain the rejection of claims 1, 2, 5 through 9, and 12 through 17 under 35
U.S.C. § 103.
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, 519 U.S. 822 (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).
On pages 8 and 9 and the brief, Appellants argue that neither Nadd nor Kellenbenz teaches or
suggests separately or in combination a two terminal circuit protection arrangement which may be reset
by interrupting current in the line of the circuit to be protected as recited in Appellants' independent
claim 1, 10 and 11. Appellants also argue that neither Nadd nor Kellenbenz teaches or suggests
separately or in combination a two terminal circuit protection arrangement which may be reset by
disconnecting the circuit voltage or current source, or the load from the electrical circuit as recited in
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