Ex parte DUFF - Page 5




          Appeal No. 1998-0073                                                        
          Application 08/273,813                                                      

          portable computer.  Appellant further argues that Chadima’s                 
          sealed housing cannot be used for sealing Hsieh’s clam shell                
          computer.                                                                   
               With respect to claims 1, 5 through 9, 11, 12, 15 through              
          17, 24, and 25, 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                 
          1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied,               
          469 U.S. 851 (1984)).                                                       
               The Examiner on page 4 of the answer states that Chadima               
          teaches the placing of a sealing gasket that is malleable and               
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