Appeal No. 1997-4428
Application 08/259,634
(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)(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 page 3 of the answer, the Examiner states that DeMoore
fails to teach that the base covering 62 is electrically
conductive. The Examiner argues that Kobler recognizes that
an undesirable electrostatic charge is built up on the surface
of rubber cylinders in the printing press during the printing
operation and teaches to provide an electrically conductive
layer 6 on the base covering 4 connected to the cylinder body,
which is grounded, in an effort to carry away the
electrostatic charge build up on the cylinder surface. The
Examiner directs us to the drawing figure and col. 2, line 10,
through col. 3, line 26, of the Kobler reference. The
Examiner argues that it would have been obvious to one of
4
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