Appeal No. 1998-0085
Application 08/343,540
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., 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 6 and 7 of the brief, Appellant argues that the
Examiner has incorrectly read Claus. In particular, Appellant
argues that Claus does not teach an ATR signal having use-variable
data contained therein. To further support the Appellant's
arguments, Appellant has provided a declaration of William Reding,
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