Appeal No. 1998-0998
Application 08/426,069
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 & Assocs. Inc. v. Garlock,
Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983).
On pages 2 and 3 of the Reply Brief, Appellants argue that Koyama fails to teach or
suggest that the cartridge has a case that has a recessed formed in the portion of the
peripheral edge of the case adjacent and external to the shutter. Appellants further argue
that Koyama fails to teach that the recess is defined by a cutout across the entire thickness
of the case. Appellants point out that Koyama teaches a case that includes no such
recess.
As pointed out by our reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47
USPQ2d 1523, 1529 (Fed. Cir. 1998). Moreover, when interpreting a claim, words of the
claim are generally given their ordinary and accustomed meaning, unless it appears from
the specification or the file history that they were used differently by the inventor. Carroll
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