Appeal No. 1998-0752
Application 08/389,096
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84
n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984).
"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, 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). In addition, the Federal Circuit reasons
in Para-Ordnance Mfg., 73 F.3d at 1087-88, 37 USPQ2d at 1239-
40, that for the determination of obviousness, the court must
answer whether one of ordinary skill in the art who sets out
to solve the problem, and who had before him in his workshop
the prior art, would have been reasonably expected to use the
solution that is claimed by the Appellant.
On page 12 of the Brief, Appellant argues that the
combination of Toyama, Kao, and AAPA fails to teach the
invention of claim 9 because the combination allegedly lacks a
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