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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