Ex parte YOO et al. - Page 4




          Appeal No. 1998-2009                                                        
          Application No. 08/508,250                                                  


                                       OPINION                                        
               After a careful review of the evidence before us, we will              
          not sustain the rejection of claims 1 through 8, 11 and 12                  
          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)).                                                       



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