Ex parte ISHIMARU - Page 4




          Appeal No. 96-0439                                                          
          Application 07/956,497                                                      


               We will not sustain the rejection of claims 1 through 3                
          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.                 
          Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed.                 
          Cir. 1983), cert. denied, 469 U.S. 851 (1984).                              
               In regard to the rejection of claims 1 through 2 under 35              
          U.S.C.  103 as being unpatentable over Appellant’s admitted                
          prior art shown in Figures 9 and 10 and Nakatani, Appellant                 
          argues on pages 5 through 10 of the brief that Appellant’s                  

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