Appeal No. 1997-1231
Application No. 08/308,985
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 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.
Inc. v. SGS Importer 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 & Assoc. v. Garlock, Inc., 721 F.2d 1540,
1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984).
Analysis
Claims 1, 4 to 6, 7, 8 and 9
We first take claim 1, the only independent claim. After
discussing Roberts and Oda individually, the Examiner asserts
(answer, page 4) that “it would have been obvious . . . . to
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007