Appeal No. 95-2138
Application 07/852,078
We find that Appellants= disclosure meets the requirements
of 35 U.S.C. ' 112, first paragraph. Therefore, we will not
sustain the Examiner's rejection of the claims under 35 U.S.C.
' 112, first paragraph.
In regard to the rejection of claims 1 through 3 and 10
through 15 under 35 U.S.C. ' 103 over Swartz, the Examiner has
failed to 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 or 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, 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).
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