Appeal No. 1998-0976
Application 08/379,722
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 determin-
ing 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)).
On page 3 of the answer, the Examiner states that
DeMoore fails to teach that the base covering 62 is electri-
cally conductive. The Examiner argues that Köbler recognizes
that
an undesirable electrostatic charge is built up on the surface
of rubber cylinders in the printing press during the printing
operation and teaches providing an electrically conductive
4
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