Ex parte BATES et al. - Page 3




                Appeal No. 95-2219                                                                                                            
                Application 08/041,922                                                                                                        


                         Rather than reiterate the arguments of Appellants and the                                                            
                Examiner, reference is made to the briefs  and answer for the        2                                                        
                respective details thereof.                                                                                                   
                                                                 OPINION                                                                      
                         We will not sustain the rejection of claims 1 through 20                                                             
                under 35 U.S.C.  103.                                                                                                        
                         The Examiner has failed to set forth a prima facie case of                                                           
                obviousness.  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, Inc., 73 F.3d 1085, 1087, 37 USPQ2d                                                              
                1237, 1239 (Fed. Cir. 1995), citing W. L. Gore & Assocs., Inc. v.                                                             


                         2Appellants filed an appeal brief on August 19, 1994.  We                                                            
                will refer to this appeal brief as simply the brief.   Appellants                                                             
                filed a reply appeal brief on January 3, 1995.  We will refer to                                                              
                this reply appeal brief as the reply brief.  The Examiner stated                                                              
                in the Examiner’s letter dated January 30, 1995 that the reply                                                                
                brief has been entered and considered but no further response by                                                              
                the Examiner is deemed necessary.                                                                                             
                                                                      3                                                                       





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