Ex parte MATSUI et al. - Page 8




                     Appeal No. 1997-2426                                                                                                                                              
                     Application 08/087,849                                                                                                                                            


                                Rather than reiterate the arguments of the Appellants and the Examiner, reference is made to                                                           
                     the briefs  and answer  for respective details thereof.2                  3                                                                                                                                 

                                                                                   OPINION                                                                                             

                                We will not sustain the rejection of claims 38 through 50 under 35 U.S.C.  103.                                                                       

                                The Examiner has failed to set forth a prima facie case of obviousness. 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 the 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 & Assoc., Inc. v. Garlock, Inc.,                                                                 

                     721 F.2d 1540, 1548, 220 USPQ 303, 309  (Fed. Cir. 1983), cert. denied, 469 U. S. 851 (1984).                                                                     

                                           In regard to the rejection of claims 38, 39, 44, 45 and 50 which were rejected under                                                        

                                2Appellants filed an appeal brief on March 30, 1995.  We will refer to this appeal brief as                                                            
                     simply the brief.   Appellants filed a response addressing asserted deficiencies and new points of                                                                
                     argument on March 25, 1997.  We will refer to this response as the reply brief.                                                                                   

                                3The Examiner responded to the brief with an Examiner’s answer, dated December 26, 1996.                                                               
                     We will refer to the Examiner’s answer as simply the answer. The Examiner responded to the reply                                                                  
                     brief with a letter dated April 4, 1997 stating that the reply brief had been entered and considered but                                                          
                     that no further response by the Examiner was deemed necessary                                                                                                     
                                                                                          8                                                                                            





Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  14  15  Next 

Last modified: November 3, 2007