Appeal No. 96-3242
Application 08/458,012
claims 20 through 25, and thereby the claims are not
anticipated by Miura.
Claims 20 through 25 also stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Miura. On page 4 of the
answer, the Examiner argues that it would have obvious to
include the claimed information content on the record medium
of Miura.
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.,
6
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