Appeal No. 1998-3359
Application 08/572,347
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 page 5 of the brief, Appellants argue that neither
DiGiulio nor Salazar teaches or suggests dividing the control
cycle into first discrete time intervals sufficient to allow
completion of the respected control algorithms as recited in
Appellants’ claim 1. Appellants agree that DiGiulio does
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