Appeal No. 1998-0823
Application 08/630,542
Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).
In addition, the Federal Circuit states that "[t]he mere fact
that the prior art could be so modified would not have made
the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ
1125, 1127 (Fed. Cir. 1984).
"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). In addition, the Federal Circuit reasons
in Para-Ordnance Mfg., 73 F.3d at 1087-88, 37 USPQ2d at 1239-
40, that for the determination of obviousness, the court must
answer whether one of ordinary skill in the art who sets out
to solve the problem, and who had before him in his workshop
6
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