Ex parte BARKER - Page 4




          Appeal No. 1998-0665                                                        
          Application 08/303,128                                                      


                    After a careful review of the evidence before us, we              
          will not sustain the rejection of claims 28 through 30 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)).                             
                    With respect to claim 28, the Examiner reasons that               
          Redford discloses the claimed invention except for a voice                  
          command button, a voice data button and a microphone                        

                                         -4-                                          





Page:  Previous  1  2  3  4  5  6  7  8  9  Next 

Last modified: November 3, 2007