Appeal No. 96-2168
Application No. 08/257,478
Yamaguchi with Karlin, the expected result would be a
microcomputer for each motor, not one microcomputer as
claimed. Although there are many similarities between
Karlin and the claimed invention (plural motors individually
controlled in one system), dissimilar aspects of the claimed
invention are not met. "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). For the
above reasons, we will not sustain the rejection of claim 1,
and likewise dependent claims 2, 3, 6 and 13, dependent
therefrom and subject to the same applied art.
Turning to the 35 U.S.C. § 103 rejection using the
prior art of Karlin and Yamaguchi, as discussed supra, and
further in view of Nam, we will first look at claims 4 and
5, since they depend from claim 1. The critical issue is,
-7-7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007