Appeal No. 95-1238
Application 08/009,406
(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), cert. denied, 469 U.S. 851 (1984).
Appellants argue on pages 10 and 11 of the brief that Arendt
and Utt, together or individually, fail to teach or suggest a
system or process that uses two x-ray beam energies to determine
the combined amount of two materials, the amount of a third
material and the total amount of a component of at least three
materials. Appellants argue on pages 11 through 22 that there is
no motivation or suggestion to modify Arendt’s use of three x-ray
energies to determine the individual amounts of the three
material to using only two x-ray energies to determine the
combined amount of two materials, the amount of a third material
and the total amount of a component of at least three materials.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification." In re Fritch,
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