Appeal No. 95-1860
Application 07/988,074
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). The Examiner has not
addressed these issues in any way in the answer. Furthermore,
the Federal Circuit states that "[t]he mere fact that the prior
art may be modified in the manner suggested by the Examiner does
not make the modification obvious unless the prior art suggested
the desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992),
citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). "Obviousness may not be established using hindsight
or in view of the teachings or suggestions of the inventor."
Para-Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37
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