Appeal No. 1996-3262
Application No. 08/141,632
Also, 37 CFR § 1.192(c)(8)(iii) stated:
For each rejection under 35 U.S.C. § 102, the argument
shall specify the errors in the rejection and why the
rejected claims are patentable under 35 U.S.C. § 102,
including any specific limitations in the rejected
claims which are not described in the prior art relied
upon in the rejection.
Thus, 37 CFR § 1.192 provides that just as the Court is not under
any burden to raise and/or consider such issues this Board is not
under any greater burden.
In view of the foregoing, the decision of the Examiner
rejecting claims 16 and 17 under 35 U.S.C. § 102(b) is affirmed.
D. Rejection of claims 5, 6 and 9-15 under 35 U.S.C. § 103 over
Ohta et al when taken with Nakahata et al and Inada et al.
We will not sustain the rejections of claims 5, 6, and 9-15
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
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