Appeal No. 96-4180
Application No. 08/225,138
Rather than reiterate the arguments of Appellants and the
Examiner, reference is made to the brief and answer for the 3
respective details thereof.
OPINION
We will not sustain the rejection of claims 1, 2 and 5
through 12 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),
3In response to Appellants' appeal brief, the Examiner
issues a letter, mailed July 25, 1996. We will accept the
letter as an Examiner's answer, but suggest in the future the
Examiner should follow the requirements recited in 37 CFR
1.193.
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