Ex parte HUAT - Page 4




          Appeal No. 1996-2956                                                        
          Application 08/152,192                                                      

               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).               
               On pages 16-24 of the brief, Appellant argues that the                 
          Examiner has failed to recognize that the prior art does not                
          teach automatic transportation of unenclosed ICPUs from one                 
          treatment or test station to another.  Appellant further                    
          argues that the Examiner has failed to recognize that the                   
          prior art does not teach the integration of treatment and test              
          stations for testing, marking, sorting, and packing ICPUs of                
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