Appeal No. 1998-0659
Application No. 08/264,527
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. Inc., 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 & Assocs., Inc. v. Garlock, Inc.,
721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984).
We find that the Examiner's contention that one of the
coils of Matsushima must vibrate is without adequate
foundation. Matsushima is devoid of any teaching that a coil
comprises an electric/vibratory transducer and no evidence has
been provided to support the contention that such coil must
vibrate. Furthermore, Matsushima discloses their device to
operate by electrical tinnitus suppression, as we have
discussed above, and not by vibration.
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