Appeal No. 95-3681
Application 07/956,705
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), 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). In addition, the Federal Circuit reasons in
Para-Ordnance Mfg., 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 out 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.
Upon a closer reading of Treat, we find that Treat
specifically mentions Mincone as well as other prior art devices
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