Appeal No. 97-0280
Application 08/192,839
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 and 16 through 21
under 35 U.S.C. § 103 as being unpatentable over Stevens and
Dooley, Appellants argue on pages 5 through 8 of the brief that
there is no suggestion in the prior art to combine Stevens and
Dooley to perform the method steps as set forth in Appellants’
claim 1. The Examiner points out on pages 3 and 5 of the answer
that Dooley teaches the use of a counter for counting the total
number of errors detected by an error detecting means for the
purpose of isolating the source of errors. The Examiner argues
that this teaching is a suggestion to combine Dooley with
Stevens.
The Federal Circuit states that "[t]he mere fact that the
prior art may be modified in the manner suggested by the Examiner
4
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007