Appeal No. 1998-3385
Application No. 08/601,551
Appellants argue; (1) there would have been no motivation
to alter the annotation system of Borovoy to include the note
marker of Vu/Post modified to be a three-dimensional pointer
of the Woolsey-Lisle combination; and (2) the references taken
in combination or alone do not teach or suggest the claimed
invention. 1
As noted by our reviewing court, the Examiner must 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. 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., Inc. v. SGS
Importers Int’l, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,
1See pages 7 and 8 of the brief.
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