Appeal No. 1997-1766
Application No. 08/245,033
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, 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).
In Appellant's appeal brief, reply brief and second reply
brief, Appellant argues that it would not have been obvious to
those skilled in the art to combine the image stabilization
teachings of the secondary references with the five-unit
nonstabilizing zoom lenses of Ogawa or Ishii. Appellant
argues that the Examiner continues to ignore the complexity
and unpredictability of zoom lens construction with image
stabilization. Appellant argues that designing a multi-
-5-
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