Appeal No. 97-2699
Application 08/112,535
column 5, line 45, through column 6, line 26, that the minimum and maximum dimensions of a
mushroom are determined by pairing the determined border pixels and by determining the minimum and
maximum dimension by subtracting the position of the paired positions. Therefore, Moorehead teaches
identifying features in said region of interest by pairing and determining the size of the identified features
as recited in Appellant's claim 28.
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 reasonable teachings or suggestions found in the
prior art, or by a reasonable inference to the artisan contained in such teachings or suggestions. In re
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983). In addition, the Federal Circuit
states that "[t]he mere fact that the prior art may be modified in the manner suggested by the Examiner
does not make the modification obvious unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
"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). In addition, the Federal Circuit
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