Appeal No. 1997-0600
Application 08/291,207
(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, 519 U.S. 822 (1996) citing W. L. Gore & Assoc.,
Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On pages 1 and 2 of the reply brief, Appellants
argue that since the Examiner has removed the novelty
rejection of claim 10 and substituted an obviousness rejection
for that claim, the previously made arguments still apply to
the obviousness rejection. In particular, Appellants point
out that the Examiner states that it would be obvious to
include an inductor as shown by Kuroki in the prior art
device. Appellants argue that Kuroki would teach adding an
inductor but would not teach adding an inductor with the
several connections of the present invention which make up a
different circuit.
We note that claim 10 recites
6
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