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
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