Ex parte FUTAKUCHI - Page 8




          Appeal No. 2000-0806                                                        
          Application No. 09/016,398                                                  


                    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, Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,                  
          1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (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 8-15 of the Brief, Appellant argues that                 
          the Dordi reference applied by the Examiner does not teach a                
          printed circuit board having vias within it and solder balls                

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