Ex parte KOIKE et al. - Page 5




          Appeal No. 1998-0618                                                        
          Application 08/288,194                                                      


          will not sustain the rejection of claims 32 through 37 under                
          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 reasonable teachings or suggestions                
          found in the prior art, or by a reasonable inference to the                 
          artisan 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) (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)).              
                    The Examiner reasons that Kado teaches the claimed                
          invention except for “taking images of reference faces in M                 
          directions wherein M is an integer equal to two or greater and              



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