Appeal No. 96-4181
Application 08/139,664
The Examiner relies on the following reference:
Sakamoto 5,341,304 Aug. 23, 1994
(filed Aug. 27, 1993)
Claims 1, 3, 5 through 13 and 15 through 18 stand rejected under 35 U.S.C. § 103 as being
unpatentable over Sakamoto. 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, 3, 5 through 13 and 15 through 18 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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