Appeal No. 95-2576
Application 07/962,952
shortest channel length capable of receiving said maximum
voltage" is definite. Therefore, we find that the above quoted
Appellants’ claim language sets out and circumscribes the
particular area with a reasonable degree of precision. In view
of the foregoing, we will not sustain the Examiner’s decision
that Appellants’ claims 3, 6, 8, 9 and 12 are properly rejected
under 35 U.S.C. § 112, second paragraph.
Turning to the Examiner's rejection of Appellants' claims
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 & Assocs., Inc. v.
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