Appeal No. 1997-2406
Application 08/170,651
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to
the briefs and answer for the respective details thereof.3
Opinion
We will not sustain the rejection of claims 1, 3 through 10, 13 and 16 through 18 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 & Associates., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
3Appellant filed an appeal brief on August 8, 1996. Appellant filed a reply brief on December
9, 1996. The Examiner mailed a letter on January 15, 1997 stating that the reply brief has been entered
and considered but no further response by the Examiner is deemed necessary.
4
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