Appeal No. 95-2917
Application 08/082,895
of 35 U.S.C.
§ 112, first paragraph.
In regard to the 35 U.S.C. § 103 rejection, 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
implica-tions 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. Garlock, Inc., 721 F.2d 1540,
1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
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