Appeal No. 96-1268
Application 08/013,739
Claims 7 through 12 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Shimura and Funahashi.
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to
the briefs and answers for the respective details thereof.2 3
OPINION
We will not sustain the rejection of claims 7 through 12 under 35 U.S.C. § 103.
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, 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.
2Appellant filed an appeal brief on February 24, 1995. We will refer to this appeal brief as
simply the brief. Appellants filed a reply appeal brief on July 31, 1995. We will refer to this reply
appeal brief as the reply brief. The Examiner responded the reply brief in a supplement
Examiner’s answer mailed October 16, 1995, thereby, entering the reply brief.
3The Examiner responded to the brief with an Examiner's answer, mailed May 31, 1995.
We will refer to the Examiner's answer as simply the answer. The Examiner responded to the
reply brief with a supplemental Examiner's answer mailed October 16, 1995. We will refer to the
supplemental Examiner's answer as simply the supplemental answer.
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