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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