Ex parte KODAIRA et al. - Page 4




          Appeal No. 1999-2000                                                        
          Application 08/859,494                                                      


          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),                  
          citing W. L. Gore & Assocs., Inc. v.                                        


          Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.                 
          Cir. 1983).                                                                 
               Appellants argue on pages 5 and 6 of the brief that none               
          of the prior art references teaches or suggests a non-                      
          transparent electrode connected to the drain region of the                  
          transistor that completely overlaps the channel region, as set              
          forth in claim 44.  Appellants argue further on pages 6 and 7               
          of the brief, that one of ordinary skill in the art would not               
          have been motivated to combine figure 7, Fisher and Asano to                
          modify any of these references to obtain the above limitation.              
          In the reply brief, Appellants argue that it would not have                 
          been obvious to provide a non-transparent electrode connected               

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