Appeal No. 96-4074
Application 08/387,669
Matsui et al. (Matsui) 4,790,023 Dec. 6, 1988
Specht et al. (Specht) 4,805,123 Feb. 14, 1989
Claims 1, 4, 7 and 8 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Watanabe in view of Matsui. Claims 5, 6, 9 and 10 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Watanabe in view of Matsui and further in view of Specht.
Rather than reiterate the arguments of Appellant 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 10 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).
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