Appeal No. 1996-3638
Application 08/169,681
Claims 4, 5, 8 and 9 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Melnychuck and Adelson and further in view of Katsuta.
Rather than reiterate the arguments of Appellants and the Examiner, reference is made to the
briefs and answer for the respective details thereof.1
OPINION
We will not sustain the rejection of claims 1 through 9 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).
1Appellants filed an appeal brief on January 29, 1996. Appellants filed a reply brief on May
13, 1996. The Examiner mailed a communication on May 31, 1996 stating that the reply brief has
been entered and considered but no further response by the Examiner is deemed necessary.
3
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