Appeal No. 1997-2382
Application 08/287,064
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 determin-
ing 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 5 through 7 of the brief, Appellant argues
that Gries does not teach or motivate one of ordinary skill in
the art to provide the direct encoding of source code into a
subroutine address without extracting an op code. In particu-
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