Appeal No. 1998-1981
Application No. 08/695,899
will not sustain the rejection of claim 9 or dependent claim
10 for the reasons set forth above.
In regard to the rejections 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 & Assoc.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548,
220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
We note that the Examiner for these rejections, is
relying on Tsuzuki in the same matter as above in that Tsuzuki
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