Appeal No. 1997-2862
Application 08/069,052
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the
briefs and answers for the respective details thereof.2 3
OPINION
We will not sustain the rejection of claims 11 and 13-20 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). We note that
our reviewing court states that "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).
2Appellant filed an appeal brief on February 5, 1996. Appellant filed a reply brief on
October 1, 1996. On December 10, 1996, the Examiner responded to the reply brief with a
supplemental examiner's answer thereby entering the reply brief into the record. On January 14, 1997,
Appellant filed a supplemental reply brief. In a letter of communication mailed on February 28, 1997,
the Examiner stated that the supplemental reply brief has been entered and considered but no further
response by the Examiner is deemed necessary.
3On July 30, 1996, the Examiner mailed an examiner's answer. On December 10, 1996 the
Examiner mailed a supplemental examiner's answer.
3
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