Appeal No. 95-1555
Application 07/871,530
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, 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), 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 v. SGS Importers
International, 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 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 Appellants.
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