Appeal No. 96-3898
Application 08/420,441
Rather than reiterate the arguments of Appellants and the Examiner, reference is made to the
brief and answer for the respective details thereof.
OPINION
We will not sustain the rejection of claims 1 through 4, 6, 7, 17 through 19 and 22 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. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
Appellants argue on pages 8 through 10 of the brief that the admitted prior art and Barton fail to
suggest the Examiner's proposed modification. Appellants argue at best the admitted prior art suggests
that in order to engage the hub with increased-inward forces, the cross-sectional area symmetrically
along the axis for the heat shrink clamp must be increased. Appellants argue that Barton teaches a
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