Appeal No. 1997-4038
Application 08/337,550
Claims 11, 12 and 19 stand rejected under 35 U.S.C. § 103 as being unpatentable over
Young.
Rather than reiterate the arguments of Appellant and the Examiner, reference is made to the
brief and answer for the respective details thereof.
OPINION
We will not sustain the rejection of claims 11, 12 and 19 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 & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309
(Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984).
On pages 3 through 6 of the brief, Appellant argues that Young does not teach or suggest
"determining the temperature of the analog integrated circuit" as recited in Appellant's claims. On pages
6 through 8 of the brief, Appellant argues that Young does not teach or suggest
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