Appeal No. 1996-3089
Application No. 08/006,860
"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).
At page 4 of the answer, the Examiner states:
The particular choice of keys or the source
of substrings given in claim 9 does not
affect the claimed structure, means, or
method in any substantial way; they lack
criticality.
We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference, common knowledge or
unquestionable demonstration. Our reviewing court requires
this evidence in
order to establish a prima facie case. In re Knapp-Monarch
Co.,
296 F.2d 230, 232, 132 USPQ 6, 8 (CCPA 1961); In re Cofer, 354
8
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