Ex parte CLEMENTE - Page 3




               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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