Appeal No. 1997-2585
Application 07/930,880
After careful review of the evidence before us, we
do not agree with the Examiner that claims 1 through 10, and
12 through 20 are properly rejected under 35 U.S.C. § 103.
Accordingly, we reverse.
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 & Assoc., Inc. v. Garlock, Inc., 721 F.2d
5
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