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 5Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 NextLast modified: November 3, 2007