Appeal No. 2000-2263
Application No. 08/925,387
We will not sustain the rejection of claims 8 through 14
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 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),
citing W. L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d
1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983).
On pages 4 and 5 of the brief, Appellants argue that
neither the admitted prior art Figs. 7 and 8 nor Nakamura
teaches or suggests an ink feeding needle located slightly
behind the position determining shaft as recited in
independent claim 8. Appellants argue that Nakamura does not
address the ink feeding needle/ink outlet piece alignment
-4-
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007