Appeal No. 96-2418
Application 08/137,267
We will not sustain the rejection of claims 1 through 10
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), cert denied, 117 S.Ct. 80 (1996)
citing W. L. Gore, 721 F.2d 1540, 1548, 220 USPQ 303, 309.
The Examiner rejects Appellant’s only two independent
claims, claims 1 and 9, under 35 U.S.C. § 103 as being
unpatentable over Honey. The Examiner reasons that because Honey
teaches the use of dead reckoned positioning (DRP) and contour of
equal probability (CEP), those skilled in the art would have been
motivated to use travel points along the road segment as data for
correcting navigational vehicle position by selecting minimum
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