Ex parte CARLSEN et al. - Page 5




          Appeal No. 1997-0402                                                        
          Application 07/843,685                                                      


                    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 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).                
          "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) (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)).                             
                    With regard to the rejection of claim 1, the                      
          Examiner reasons that Miska teaches the claimed invention                   
          except for placing the second call automatically, instead of                
          manually (answer-pages 7 and 8).  The Examiner states:                      
               It would have been obvious to one having ordinary                      
               skill in the art at the time the invention was made                    
               to incorporate the means responsive to reception of                    

                                         -5-                                          





Page:  Previous  1  2  3  4  5  6  7  8  9  Next 

Last modified: November 3, 2007