Appeal No. 1998-1110
Application No. 08/391,263
OPINION
We will not sustain the rejection of claims 1-5 and 8-10
under 35 U.S.C. § 103(a).
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), 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).
On pages 6 through 12 of the brief, Appellants argue that
Nickerson et al., Daher, and Adams et al. fail to teach
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007