Appeal No. 1999-1578
Application 08/764,508
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the
brief but no one can answer for the respective details thereof.2
OPINION
We will not sustain the rejection of claims 1, 2 and 4 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, 519 U.S. 822 (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).
Appellant argues on pages 8 and 9 of the brief that neither Arita nor Eto, either alone or in
combination, discloses or suggests the features recited in each of independent claims 1 and 4. In
particular, Appellant argues that neither reference teaches or suggests setting a predetermined positional
2Appellant filed an appeal brief on August 13, 1998. Appellant filed a reply brief on
December 9, 1998. The Examiner mailed a letter on December 23, 1998 stating that the reply
brief has been enter and considered. There is no further response by the Examiner.
3
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